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History of 
the Trade -Mark 

"YALE" 



CONTENTS 

PAGE 

Foreword 5 

Trade-Mark Benefits 6 

History of the Trade-Mark 

"Yale" 7 

List of Registrations 23 

Adjudications and Settlements 24 

Court Cases 25 

Settlements 28 

Cases Involving the Issue of 

"Unfair Competition" ... 31 
Decisions and Decrees in Court 

Cases 39 



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History of 
the Trade-Mark 



u 



Yale" 



Issued 
January, 19 14 



PUBLISHED BY 

THE YALE & TOWNE MANUFACTURING CO. 

General Offices: 

No. 9 EAST 40th STREET, NEW YORK 
Works: STAMFORD, CONN., U. S. A. 



1865-1 .'14.130. 4.64 



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FROM THE 

CENTURY DICTIONARY 

Trade-mark : A distinguishing mark or device adopted 
by a manufacturer, and impressed on his goods, labels, 
etc., to indicate the origin or manufacturer. 

The foundation of the protection afforded by the law 
to the owners of trade-marks is in the injustice done to 
one whose trade has acquired favor with the public if 
competitors are allowed, by colorable imitation of 
methods first adopted and continuously used by him for 
making his products recognizable, to induce intending 
purchasers to take their goods instead of his. 



Copyright 

The Yale & Towne Mfg. Co. 

1914 



FEB -4 1914 

©CI.A36192 



Foreword 

SO many cases develop, from time to time, involving 
encroachment upon our legal rights in trade-marks, 
catalog numbers, distinctive designs, and other 
indicia of the origin of our numerous products, as to make 
expedient the issue of this record of cases in which our 
rights have been sustained and confirmed, either by- 
adjudication, by default, or by confession. 

The purpose in view is one both of enlightenment and of 
warning ; of enlightenment for those who may be ignorant 
of the law governing the rights in question, and of warning 
to those who hereafter, wittingly or unwittingly, may en- 
croach upon our legal rights, that we shall in every case 
vigorously seek to protect them. 

To those who sincerely desire to obey the Golden 
Rule, and to understand what this implies in trade- 
mark matters, this record will prove enlightening and 
helpful. 

Respectfully, 
The Yale & Towne Manufacturing Co. 



TRADE-MARK BENEFITS 

A TRADE-MARK belongs to the manufacturer or 
/ % merchant who originates it, and with whose goods 
-*- ■*■ it is identified, but its benefit accrues not only to 
him, but equally or more to his trade customers, the dis- 
tributors, and to the public, the consumers. The benefit 
to the distributor consists in an assured market, in quicker 
sales, in satisfied customers who get what they know 
and want, and in participation in the results of all adver- 
tising by the trade-mark owner. The benefit to the con- 
sumer consists in obtaining an article of established quality 
and repute, which is the same whenever and wherever 
purchased, of which he knows or may know the fair current 
price, and which ensures him fair value for the price paid. 
To an unusual degree all of these qualities inhere in the 
trade-mark "YALE," and serve to benefit both the dis- 
tributor and the consumer of YALE PRODUCTS. 



HISTORY OF THE TRADE-MARK 



U 



YALE" 




Fig. i. 
Linus Yale, senior. 



THE little hamlet of Newport, in Her- 
kimer County, New York, about 12 
miles northeast of Utica, was the place 
where the name "Yale" was first used 
in connection with locks and hardware, 
in which connection it is now a house- 
hold word throughout the civilized 
world. How that trade-mark acquired 
its present significance, and became 
the synonym for "The Yale & Towne 
Manufacturing Company," will appear 
from what follows. 



Linus Yale, senior (Fig. 1), born in Middletown, Conn., in I797 r 
but reared in Herkimer County, N. Y., had a natural talent for 
mechanics which first bore fruit in improvements in various milling 
devices, but which led him later into designing and making bank 
locks, which, in those days, were always operated by keys, and usually 
were of more or less intricate construction. 

It appears that he started as a lock maker about 1840, and that 
in 1847 he built, in Newport, N. Y., the substantial stone building, 
still standing, which ever since has been known locally as the "Yale 
Lock Shop," and which is shown by the accompanying illustration 
(Fig. 2). In that year also he brought out a "Yale Bank Lock," 
the first of the long line of locks 
destined to bear that trade-name, 
which was a masterpiece of ingenuity 
and which won lasting repute for the 
name "Yale" as indicative of origin 
and high quality. 

This first "Yale Lock" was made 
in two forms or models, the "Single" 




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Fig. a. 
Yalb Lock Shop, Newport. N. Y. 



HISTORY OF THE TRADE-MARK "YALE" 




Fig. 3. Early Yale Bank Lock. 



and the "Double," the 
latter being shown by 
Fig. 3 . It was operated 
by a round fluted key 
acting upon four sets of 
pin-tumblers, embody- 
ing the principle used 
thousands of years ago 
in Egypt (see Fig. 14), 
but skillfully adapted 
to modern conditions 
and needs. The Lock 
contained four sets of 
these "pin-tumblers," 
radiating from the keyhole (as shown by the dotted lines in Fig. 3), 
which were actuated and set by four irregular grooves or "flutes" 
in the key, these flutes and the pin-tumblers being very accurately 
adjusted to each other. The "Double" form of this Lock, shown 
by Fig. 3> contained two of these mechan- 
isms, each controlled by a different key, the 
one to the right in the picture serving to 
close and guard the keyhole of the other, so 
that the key of the latter could not be in- 
serted until the former was unlocked. The 
"Single" form of this Lock embodied the 
mechanism shown on the left portion of 
Fig. 3, its key acting directly on the bolt. 
These Locks were followed in subsequent years by other "Yale 
Bank Locks," and also by smaller Locks intended for use on the 
doors of stores, houses, etc., and also on cash drawers. One of 
p these, a Night Latch, is shown by Fig. 4, and another, a Dead 
Lock, by Fig. 5. Each of these is operated 
by a "fluted" key acting upon a series of 
flat lever tumblers which guard the bolt. 

One of the last Bank Locks made by 
Linus Yale, senior, is shown by Fig. 6, and 
is very interesting. In this lock the key- 
hole is at the back, that is, within the safe 
or vault, and the lock is operated by two 
wrenches, permanently fixed in the door 
and each having a "T" handle on the 

Fig. 5. Early Yale Store Door • 1 r ^1 1 <-r, 1 

dead Lock. outside ot the door. 1 he lower one 




Fig. 4. First Yale Rim 
Night Latch. 




HISTORY OF THE TRADE-MARK "YALE" 



of these, marked "H," can be 
moved in rotation and also longi- 
tudinally. Its inner end carries the 
arm "A"', which in turn carries the 
key "K." To open the lock the 
handle "H" is rotated so that the 
arm stands in the lower position A', 
and is then pulled forward so that its 
lower end enters the hole "A" in 
the door, and projects through the 
latter. The key "K" is thereupon 
screwed on to the arm for use. The 
arm is then pushed back to the posi- 
tion shown in the cut, and rotated 
to the position "A 2 ", whereupon it 
can be pulled forward so that the 
key "K" shall enter the keyhole 
"L" of the lock, thus setting the 
tumblers to permit the lock to oper- 
ate. Thereupon the lock is operated 
by turning the wrench "W," the 
movement of which is transmitted 
by gears to the lock mechanism and 
the bolt. When the lock is locked 
these movements are reversed, the 
key "K" returned to the hole "A," 
and then unscrewed, so that it may be carried away by the person 
in control of the lock. 

In addition to Bank Locks, Linus Yale, senior, produced a number 
of locks for use on doors, drawers, etc., all of high security and great 
mechanical excellence, as well as of much higher cost than the locks 
then in common use, thus further promoting the repute of the name 
"Yale," which was always associated with them. He died in 1857. 

He was never in partnership with his son, who conducted his 
business independently. After the death of Linus Yale, senior, the 
manufacture of Yale locks at Newport, N. Y., was continued by his 
successors, whose interests were ultimately transferred to The Yale 
& Towne Manufacturing Company, whose origin and growth are 
described below. 

Linus Yale, junior, his son, born in Salisbury, N. Y., in 1821, 
began his career as an artist, but soon gave rein to his inherited apti- 
tude for mechanics by following in his father's footsteps as a designer 




Fig. 6. Early Yale Bank Lock 
(for description see text). 



10 



HISTORY OF THE TRADE-MARK "YALE" 




Fig. 7. Linus Yale, junior. 



and maker of locks. His first essays in this 
field were in his father's factory, the "Yale 
Lock Shop" in Newport, N. Y. (Fig. 2), 
but about 1855, he moved to Philadelphia 
(where he formed his friendship with William 
Sellers, referred to later), and started business 
on his own account. Later, about 1861, he 
moved to Shelburne Falls, Mass. (Fig. 8), 
where he lived until his death in 1868. 

The son, like the father, devoted himself 
at first to Bank Locks, which in that day 
were of intricate construction and high cost, 
the best locks selling for $100, $200, and even #500 apiece. Lock- 
picking contests were not infrequent, and the great "Lock Con- 
troversy" in England, in 185 1, when the American expert Hobbs suc- 
ceeded in picking, one after the other, all the best English bank locks, 
greatly stimulated public interest in 
the subject, as well as the ambition of 
rival lock makers. 

Under these influences, Linus Yale, 
junior (Fig. 7), brought out a series of 
remarkably ingenious bank locks, each 
designated by a distinctive name, which 
are shown by the accompanying illus- 
trations and which may briefly be 
described as follows : 
One of the first of these was the Yale Infallible Bank Lock, 
shown by Fig. 9 (1851 or 1852). It has a key of the "changeable" 
that is, a key the component parts of which could be sepa- 
rated and reassembled to change the com- 
bination. To use it, it was slipped into 
engagement with the slide and the latter 
then pushed forward into the keyhole in 
the lock, setting the tumblers, and thus 
permitting the bolt to be moved by the 
lever handle at the top of the lock. The 
cut shows the key in place, and the 
tumblers set ready for the bolt to be 
withdrawn. 

The next in the series was the Yale 
Magic Bank Lock, shown by Fig. 10 (about 
Yale "infallible" bank lock. 1855-1857), which is a modification of the 




Fig. 8. 
Shop at Shelburne Falls, Mass. 




HISTORY OF THE TRADE-MARK "YALE" 




Fig. io. Yale "Magic" Bank Lock. 



"Infallible" lock. In this lock 
the "pod" of the detachable key- 
is round in shape, and has a series 
of irregular circular pieces, suscep- 
tible of rearrangement to change 
the combination, and of removal 
from the key handle or wrench, 
so that only the "pod" needed 
to be carried by the person in 
control of the lock. In operating 
the lock the "pod" was detached 
from the handle wrench and 
carried laterally some two inches 
to bring it in contact with the 

tumblers, and this operation also closed the keyhole by a hardened 
steel slide preventing the introduction of picking instruments into 
the lock. By the further rotation of the key the "pod" was returned 
to the wrench, so that it was withdrawn from the lock when the 
latter was removed. 

The Yale Double Treasury Bank Lock, shown by Fig. n, 
is an evolution from the 
"Magic" lock (Fig. io), as 
the latter was from the "In- 
fallible" lock (Fig. 9), and 
marks the final achievement 
of the art in the designing of 
bank locks of intricate mech- 
anism, operated by keys. As 
explained below, this type 
of bank lock was soon to 
yield place to locks of the 
Dial or Combination type, 
without key or keyhole. The 
key of the "Treasury" lock 
was changeable by the user, 
was detachable from the 
wrench or handle, and 
when in the lock was car- 
ried away from the keyhole 
to make contact with the 
tumblers. A "disconcerter" 

Was provided to prevent the Fig. ii. Yale "Double Treasury" Bank Lock. 




12 



HISTORY OF THE TRADE-MARK "YALE" 




Fig. 12. 
Yale "Monitor" Bank Lock. 




Fig. 13. 

Yale "Double Dial" Bank Lock. 
Front. 




Fig. 14. 
"Double Dial" Bank Lock. 
Back. 



obtaining of correct impressions of the 
contact between the key and the tumblers. 
The "Double Treasury" lock contained 
two separate mechanisms, each controlled 
by its own key, and either sufficing to 
operate the bolt, thus guarding against 
accidental locking out. The lock was a 
masterpiece of ingenious design and of 
skillful workmanship, and some of 
the principles embodied in it are in 
use today in locks for safe deposit 
receptacles. 

About 1862, Linus Yale, junior, 
brought out the Yale Monitor Bank 
Lock, Fig. 12, which marks the transi- 
tion from key locks to dial or combination 
Bank Locks. In this a small crank 
handle, permanently fixed in the door, 
transmitted motion to circular tumblers 
within the lock, whereby these could be set 
to their respective numbers, whereupon 
the bolt could be thrown by turning a 
knob surrounding the spindle of the crank 
handle. The circular tumblers were 
changeable. 

This was soon followed by the Yale 
Double Dial Bank Lock, Figs. 13 and 14 
(about 1863), which embodied the prin- 
ciples of bank lock construction which 
have since become standard in the 
United States. It was made both in 
single and double form. One of the illus- 
trations shows the mechanism of this 
lock, and the other the appearance of the 
two "dials" as seen from the front of the 
door. Each dial controlled a stack of 
four circular tumblers, each tumbler 
having one hundred "changes," the total 
number of possible combinations thus 
being 100,000,000. The bolt could be 
operated by either dial, thus giving assur- 
ance against a lockout in case of derange- 



HISTORY OF THE TRADE-MARK "YALE" 



13 




ment. While dial locks have since been greatly simplified, the essen- 
tial principles on which they are all based were embodied in this 
early model. 

This long series of brilliant developments, all identified with the 
name "Yale," added greatly to the prestige it had previously acquired, 
based on the achievements of the elder Yale, and established firmly its 
significance and value as a trade-mark identified with lock-making, and 
indicative of the origin and high quality of the product to which it was 
applied. Having thus achieved the position of the leading expert 
and maker of bank locks in America, Linus Yale, junior, began to apply 
his exceptional talent as a lock expert to the improvement of small or 
key locks for general uses, in order to avail of the great and growing 
reputation of the Yale locks by extending it to cover the manufacture 
of key locks for all uses where high 
security was desired. Among the locks 
which he thus brought out at this time, 
during the period from i860 to 1868, 
was the "Cylinder Lock," embodying 
the principle of the old pin-tumbler 
mechanism of the Egyptians, as shown 
by Fig. 15, in which a wooden key 
"K," having a series of small iron pins projecting from its sur- 
face, was inserted into the end of the bolt "B" and lifted, thus 
pushing out of the bolt a corresponding series of iron pins contained 
in the block "C," and permitting the bolt to slide endwise. When 
the key was withdrawn and the bolt returned to its first position, the 
movable pins dropped back into engagement with it, thus preventing 
its movement until again reset by the proper key. 
Linus Yale, junior, adapted this pin-tumbler 
mechanism to modern conditions, producing a 
lock of high quality and great security, which 
helped to extend the growing popularity of the 
word "Yale," as indicating the maker of the 
highest grade of bank and key locks in America. 

Finally, during the last two years of his life, 
Linus Yale, junior, designed and developed the 
"metallic front" for Post Office lock boxes, 
Fig. 16, which is known everywhere as the "Yale 
Post Office Lock Box," and which is in general 
use by the United States government and by the 
governments of nearly all civilized countries. 



Fig. 15. Old Egyptian Lock. 




At this time Mr. Yale, realizing that the work of 



Fig. 16. 

Yale Post Office Lock 

Box — Model of 1868. 



14 



HISTORY OF THE TRADE-MARK "YALE" 




Fig. 17. Henry R. Towne. 



his earlier years had laid the foundation for a 
large and successful business, was looking 
for some one who could organize and develop 
it, and who could contribute additional 
capital for that purpose. 

Meantime, in another place, another series 
of events was happening which, although 
apparently unrelated, was destined to merge 
with those above referred to and to contribute 
to the final outcome. In Philadelphia, dur- 
ing the critical period of the Civil War, a 
young man had begun his career as a student 
of mechanical engineering in the Port Richmond Iron Works, had 
worked his way through the drawing room and shops, and finally had 
been given charge of the erection in place of the machinery of two of 
the then novel "Monitors," the largest of their class, which machinery 
the firm had built under contract with the Navy Department and 
from the designs of Captain John Ericsson. That work was completed 
in 1865, and thereupon the young man referred to, Henry R, Towne 
by name, desiring to qualify himself further as a Mechanical Engineer, 
made a tour of engineering establishments in Europe, studied at the 
Sorbonne, Paris, took a special technical course under the late Robert 
Briggs, C.E., and a practical course in the shops of William Sellers & 
Co., both of Philadelphia, and then began to look for a permanent 
business connection. 

Thus in 1868, Linus Yale, junior, was looking for an associate quali- 
fied to organize and manage the manufacturing operations of his busi- 
ness and to contribute additional capital to it, and Henry R. Towne 
(Fig. 17) was looking for such an opportunity as this implied. The 
late William Sellers, a noted Mechanical Engineer, and a friend of both, 
brought them together, and thus contributed to the final result. They 
met in July, 1868, and, after due negotiation, decided to unite in the 
undertaking. In October, 1868, they 
organized a corporation to conduct the 
business, selected a site in Stamford, 
Conn., and began the erection of a 
modest factory building (which is still 
in use) (Fig. 18). On December 25, 
1868, Mr. Yale died suddenly in New 
York, before the new enterprise had 
started on its career. In March, 1869, 
shop at stamfom. Conn.— 1873. the new factory being completed, the 




HISTORY OF THE TRADE-MARK "YALE" 15 

business was transferred to it from Shelburne Falls, Mass., the number 
of employees being about thirty. In the years which have since 
elapsed the business has grown steadily and the plant has been en- 
larged almost annually, to keep pace with it. The latter now occupies 
upward of twenty acres of ground, well covered with buildings of the 
most modern and substantial character, and the number of persons 
employed therein exceeds four thousand. See illustration, page 22. 

From the outset Mr. Towne, who succeeded Mr. Yale as President 
of the Company, realized the great potential value of the trade-mark 
"Yale" (Fig. 19), and took active measures to extend its use and 
application. In selecting the name for the new Company the charac- 
ter of its proposed business was indicated by the words "lock manu- 
facturing," prefaced by the word "Yale" in recognition of the achieve- 
ments with which that name was already identified, the corporate 
title thus being "The Yale Lock Manufacturing Company," which 
subsequently, in 1883, was changed to the present form, "The Yale & 
Towne Manufacturing Company," for reasons which will appear later. 
Already, however, the name "Yale," in addition to its primary signifi- 
cance as denoting origin, had acquired a secondary but equal signifi- 
cance as denoting exceptional experience and skill in lock designing, 
and the highest quality in lock security and construction. 

And so, from the commencement in 1869, the policy of the new 
Company aimed to associate the name "Yale," as a trade-mark in- 
dicative both of origin and of high quality, not only with its then 
chief product, Bank Locks, but with each of its other products, and 
with new products as added, all of which then consisted exclusively 
of goods of the highest and most expensive grades, thus continuing 
and enhancing the prestige which the name had acquired in its 
association with the products of the business previously conducted by 
Linus Yale, senior, and Linus Yale, junior. Among the many articles 
with which it has thus been associated may be mentioned the follow- 
ing as typical, viz.: 

Yale Post Office Cabinets: for small Post Offices. 

Yale Stamping Tables: for Post Office use. 

Yale Inking Pads: for the postal service. 

Yale Anodes: for nickel plating. 

Yale Drill Presses: for light machine work. 

Yale Key-bitting Machines: for locksmiths. 

Yale Sash-fasts: for protecting windows. 

Yale Transom Lifts: for transom sashes. 

Yale Automatic Bolt-motors: for safes. 

Yale Door Checks: for controlling doors. 



16 



HISTORY OF THE TRADE- MARK "YALE" 



Yale Chain Blocks: for hoisting. 

Yale Locks: of every type and for every use. 

To the original products, comprising Yale Bank Locks, Yale Cylin- 
der Locks and Yale Post Office Lock Boxes, new lines were added 
from time to time, beginning in 1873, with fine bronze Builders' 
Hardware, and in 1876, with Chain Pulley Blocks; and sooner or 
later each of these, as it became standardized and its permanence 
assured, was admitted to participation in the benefit of the Com- 
pany's chief trade-mark "Yale," by having that name associated 
with its descriptive title, to indicate origin and origin-quality, and by 
placing that trade-mark on the product itself, so that to-day upward 
of 30,000,000 of separate articles are annually turned out, each 
bearing the trade-mark in one of its most usual forms, as shown 
herewith (Fig. 19). 



du 



Fig. 19. Forms in which the Trade Mark "Yale" of the Yale & Towne 
Manufacturing Company Most Commonly Appears. 



One of the earliest additions thus made, about 1879, to the original 
line of products was Padlocks, and the model then developed (as the 
result of two years of study and experimenting), known as the No. 
853 series of "Standard" padlocks, although very novel in appearance, 
was so inherently sound in principle and design that to-day, in sub- 
stantially its original form, it has a very large and increasing sale 
in all markets of the world, and is still the most popular of the Yale 
padlocks. Its excellent security is obtained by a set of double acting 
lever-tumblers, and the trade-mark "Yale" is con- 
tained in a circular panel on its face. The familiar 
appearance of this Yale padlock is shown by Fig. 
20. Other padlocks were added year after year, 
some with pin-tumblers, many with lever-tumblers, 
and some (of cheaper character) with wards, so 
that the line of Yale Padlocks is now the most ex- 
tensive in the trade, and covers all sizes, types, and 
grades. 

One of the most widely known and used Yale 
products is the "Yale Night Latch," for use as a 
safety lock on entrance and other doors. This also is made in va- 
rious types, with pin-tumblers, with lever-tumblers, and with wards, 




Fig. 20. 
Yale "Standard" 
Padlock No. 853, 



HISTORY OF THE TRADE-MARK "YALE" 



17 



but its most popular form is the No. 42, an early model of which 
is shown by Fig. 21, and the present model by Fig. 22. The cylin- 
der used with the latter is shown by Fig. 22. 





Fig. ai. Yale Rim Night Latch, 
No. 42.— An Early Model. 



Fig. 22. Yale Rim Night Latch. 
No. 42. — Present Model. The 
most popular Night Latch in 
the world. 



The most extensive line of articles included among the Yale 
Products is that known as Yale Builders' Hardware. Begun in 
1873, this line now embraces almost every article of hardware needed 
in the equipment of buildings of every class, the variety of articles 
numbering many thousands, and including not only those of utility, 
but also an unrivalled series of decorative pieces, in every School 
of Ornament and in all metals and finishes. A few examples are 
shown by the plate Fig. 23, on page 18. 

The Yale Products embrace not only Locks and Hardware, but 
also a complete line of Chain Blocks and Hoists. This latter origi- 
nated in 1876, by the production of the Yale Differential Pulley 
Block, followed later by the Yale Duplex Block (screw-geared), and 
the Yale Triplex Block (spur-geared). Collectively the business in 
these is the largest of its kind in the world. In this department 
are also made the Yale Electric Hoists. All of these products are 
"Safety Appliances," for the safe and economical handling of loads 
of from one ton, or less, to ten, twenty or even forty tons. Their 
character is shown by the plate Fig. 24, on page 19. 

Because of the increasing diversity of its products the descriptive 
words "Lock Manufacturing" in the corporate title of the Company 
had become inappropriate, and therefore, in 1883, by vote of the 
Board of Directors and an amendment to the charter, the name 
was changed to its present form, The Yale & Towne Manufacturing 
Company. At the present time the business embraces eight principal 
Departments, each covering a different product, as follows, viz.: 

Dept. A, Yale Builders' Locks and Hardware. Including every 
kind of lock, and nearly every article of hardware, required in the 
equipment of buildings of every kind, from a cottage to a palace. 



18 HISTORY OF THE TRADE-MARK "YALE" 







Elizabethan 





Fig. 23. Yale Ornamental Hardware. 



HISTORY OF THE TRADE-MARK "YALE" 



19 




"Yale Differential "Yale Duplex 
Block." Block." 



"Yale Triplex 
Block." 



"Yale Electric 
Hoist." 




Fig. 24. Yalb Chain Blocks and Electric Hoists. 



20 



HISTORY OF THE TRADE-MARK "YALE" 



Dept. B, Yale Bank Locks. Including Timelocks, Combination 
Locks, Safe Deposit Locks, Bolt-work Motors, etc. (Fig. 25). 

Dept. C, Yale Door Checks. 
Including single and double- 
acting overhead Door Checks, 
Checking Floor Hinges, etc. 

Dept. D, Yale Chain Hoists. 
Including Differential, Duplex 
and Triplex Chain Blocks, 
Electric Hoists, overhead track 
and trolleys, etc. 

Dept. E, Yale Post Office 
Lock Boxes. Including the 
various sizes and models used 
by the United States Govern- 
ment and by numerous foreign 
Governments. 

Dept. F, Yale Cabinet and 
Trunk Locks. Including every 
variety of small locks used in 
the Furniture and Trunk 
trades, and for lockers, auto- 
mobiles, and other special uses. 
Dept. G, Yale Night Latches. 
Including the most extensive line of Safety Locks for entrance doors, etc. 
Dept. H, Yale Padlocks. Including a great variety of Padlocks, of 
all kinds, sizes, and grades. 

In addition there are numerous contributive Departments, such as 
the Iron Foundry, Brass Foundry, Press Shop, Rod Shop, Pattern 
Shop, Modelling Room, Drawing Office, etc., and a well-organized 
Welfare Department with an Emergency Hospital. 

The commercial headquarters, and the Executive Offices, are con- 
tained in a handsome office building, at No. 9 East 40th Street, New 
York City, erected by the Company for its own use, and the Com- 
pany operates, through a subsidiary corporation, Canadian Yale & 
Towne Ltd., a plant at St. Catharines, Ont., employing some 300 
people, for the conduct of its business in Canada. It has branch 
houses in Chicago and San Francisco, and also controls the stock of 
subsidiary companies for the conduct of its European business in 
London, Hamburg, and Paris. 

All of the large business conducted by means of this extensive or- 
ganization is identified, in every Department and as to every product, 




HISTORY OF THE TRADE-MARK "YALE" 21 

with the trade-mark "Yale," which for more than seventy years has 
been the symbol of origin of high-grade bank and key locks of almost 
every type, and for upward of forty years the symbol of origin of 
a large group of other products, some related to locks, as in the case of 
Builders' Hardware, others having no such relation, as in the case of 
Chain Blocks, but all distinguished by excellence in design, construc- 
tion, and adaptability to their several purposes. 

While the line of Yale Locks embraces practically all types of lock 
mechanisms, and all the staple varieties of form, size, and finish called 
for in the Hardware, Safe, Furniture, and Trunk trades, it also in- 
cludes a large and important group of locks of special design which are 
component parts of the product of other manufacturers, such as those 
for lockers, for automobiles, for cash registers, for vending machines, 
for safe-deposit boxes, etc. 

How little the public takes note of lock details, and how 
much it takes note of a well-known trade-mark, may be illustrated 
by referring to some facts concerning the case last named. Most 
persons who have valuables rent a safe-deposit box in which to 
keep securities, etc., and the great majority of them will find 
upon examining their keys that the latter are marked with the word 
"Yale," most of the safe-deposit boxes in the country being equipped 
with Yale Locks. 

To the laymen all of these keys may look like those they 
associate with the familiar "cylinder" lock with pin-tumblers, and 
some of the keys may belong to locks of that type, but, as a 
matter of fact, the most popular Yale safe-deposit lock is not of that 
type and does not embody the "cylinder" principle. On the contrary, 
it is a lock of the lever-tumbler type, which, while embodying prin- 
ciples which are very old in the art, is practically a reproduction in 
miniature of the so-called "Yale Double Treasury Lock," manufac- 
tured more than sixty years ago by Linus Yale, junior, and used for 
the protection of Bank Vaults and Safes. An illustration of this 
lock, famous in its day, appears on page n, Fig. n. 

The "good-will" of a manufacturer is one of his most valuable 
assets. It includes his own reputation, the repute of his product, 
his trade-mark, and, in many cases, the characteristic design or "dress- 
ing" of his goods by which they are identified by the public. The 
rights thus implied may be violated either by the imitation of trade- 
marks or by the imitation of product. The makers of the Yale Products 
have been forced to defend their rights against attack in both of these 
forms, and hence the record in the following pages covers two groups 
of cases, the first those relating to trade-marks, and the second those 



22 



HISTORY OF THE TRADE-MARK "YALE' 



relating to "unfair competition" or "passing off" by which latter 
terms the law designates cases where one manufacturer so closely 
simulates the style and appearance of articles made by another as to 
mislead or deceive the public as to the origin of the goods. 

While always reluctant to invoke the protection of the law, the 
Yale & Towne Manufacturing Company, as shown by the record 
herein, has been compelled to do so in many cases by the attempts, 
sometimes insidious, sometimes flagrant, of competitors to appropriate 
for their own benefit the prestige enjoyed by its trade-name YALE, 
and to deceive the public by misleading marks and other indicia de- 
signed to aid in palming off the goods of other makers as YALE 
PRODUCTS. Whenever and wherever it discovers further attacks 
of this kind upon its legal rights it will proceed promptly and vigor- 
ously to seek the fullest protection which the law affords. 




Works of the Yale & Towne Manufacturing Company, 
Stamford, Conn. 
1914 



HISTORY OF THE TRADE-MARK "YALE" 



23 



LIST OF REGISTRATIONS OF THE 
TRADE-MARK "YALE" 



Country Number 

Argentine 18,823 

Australia 13,551 

Austria 32,654 

" 56,604 

Belgium 15,802 

Brazil 3,020 

Bulgaria 2,028 

California 3,339 

Canada 69/16,971 

Cape Colony 4,408 

Ceylon i,394 

Chile 7,380 

Costa Rica 456 

Cuba 23,609 

Denmark 319/1912 

Ecuador. .Liber 69, fols. 285-287 

Egypt, Cairo 198 

Alexandria.. no 

Mamsourah 69 

Egypt, Cairo 199 

Alexandria. . 109 

Mamsourah 70 

England 4 2 >345 

Finland.... 2,335 

France 19,331 

Germany 104,668 

Guatemala 476 

" 477 

Holland 28,175 

Hong Kong 121/1912 

Hungary 24,389 

India 619/1912 



Country Number 

Italy, R. G. Vol. 10. 12,232 

" R. A. Vol. 114 49 

Japan 3*>H° 

Mexico 1 1,466 

Natal 131/1912 

New Zealand 9,786 

Nicaragua 169 

Norway 150/1912 

Orange Free State. . M45 

Paraguay 1,560 

Peru 1,417 

Philippine Islands . . 1,095 

Portugal 14,687 

Rhodesia 1,346 

Russia 2,181/12,429 

San Salvador 118 & 119 

Santo Domingo. . . . 291 

Servia 438 

Siam No number 

' No number 

Spain 20,821 

Sweden 16,073 

Switzerland 30,798 

Transvaal 4,010 

Turkey 2,202 

" 3,032 

United States 63,654 

" 74.42s 

Uruguay 2,353 

Venezuela 764 

" 1,389 



24 HISTORY OF THE TRADE-MARK "YALE" 



ADJUDICATIONS AND SETTLEMENTS 

THE word "YALE" is not only duly registered as 
a trade-mark of the Yale & Towne Manufacturing 
Company, but in a number of cases decrees en- 
joining its use by others have been entered by the courts. 
In numerous other cases infringers, when advised that 
they were encroaching upon our legal rights, have volun- 
tarily entered into stipulations to desist therefrom in the 
future. In still other cases infringers against whom suit 
has been brought have failed to make defence, and have 
permitted decrees to be entered by default perpetually en- 
joining them from a continuance of the acts complained of. 
A summary of the essential facts relating to the cases 
in each of these three groups is contained in the following 
pages. A supplement contains, in extenso, for the informa- 
tion of those who are interested, the decisions and decrees 
of the courts in the adjudicated cases. 



HISTORY OF THE TRADE-MARK "YALE" 25 



GROUP I 
COURT CASES 

Johnson Foundry & Machine Works, Ltd., Battle Creek, Mich. 

This Company made a variety of metal products, included among 
which was a line of Coat and Hat Hooks which they marked with 
the word "Yale," and which they sold under that name. Suit was 
brought in June, 1905. The U. S. Circuit Court for the Eastern 
District of Michigan, Southern Division, entered a final decree and 
injunction against this defendant, enjoining the defendant from 
infringing our trade-mark "Yale." In 1906 we discovered that this 
defendant had substituted the word "Hale" in place of the word 
"Yale" in connection with its Coat and Hat Hooks. Upon remon- 
strances from us they abandoned this imitation of our trade-mark. 

The final decree and injunction of the court in this case enjoined 
this defendant forever from all use of the name "Yale" "to designate 
hardware of its manufacture." The decree and injunction will be 
found in the Supplement. 

Victor M. Grab & Co., Chicago, III. 

In the year 1908 this defendant manufactured and sold Coat 
and Hat Hooks marked as "Yale." Suit was brought against it 
and was defended. Among other defences set up was the claim that 
the word "Yale" is so intimately connected with Yale University 
that no one has a right to appropriate it as a trade-mark. The case 
was brought before Judge Kohlsaat in the U. S. Circuit Court for 
the Northern District of Illinois, Eastern Division, and a decision was 
rendered in our favor sustaining the validity of our trade-mark and 
enjoining the defendant from infringing it. The decree and injunction 
will be found in the Supplement. 

Kate Gretzer, New York City 

In 1 9 10 this defendant, who maintained a small retail store in 
New York City, sold some flat-keyed Locks, not made by us but by 
another manufacturer, representing them as "Yale" Locks. 



26 HISTORY OF THE TRADE-MARK "YALE" 

Suit was brought in the U. S. Circuit Court for the Southern 
District of New York. The defendant entered appearance by counsel, 
but failed to defend the case, and a final decree was granted enjoin- 
ing the defendant from infringing our trade-mark "Yale." A copy 
of this decree will be found in the Supplement. 

C. Ed. Schulte, Velbert, Germany 

This defendant commenced in 1910 to manufacture goods copied 
from ours, and closely imitating them in many ways, among others 
by the use of the word "Yale" embodied in the phrase "Yale 
system," which he used when referring to goods made by him in 
imitation of ours. 

Suit was brought against him in 191 2, in Germany, and the case 
was tried by the Royal Provincial Court of Elberfeld, Fifth Civil 
Chamber, the case being strongly defended by counsel for Schulte. 
The result was a decision sustaining the validity of the trade-mark 
"Yale" as registered in Germany and enjoining the defendant from a 
further infringement thereof. A copy of the Court's decision in this case 
will be found in the Supplement which embodies a full statement of 
the defendant's acts in imitating our goods, and of the reasoning on 
which the decision rests. The Court reserved decision as to one 
phase of the case, involving the copy of the sunken panel used by 
us on the heads of lock cylinders to contain our trade-mark. After 
a further hearing a decision in our favor was rendered on this issue 
also as set forth on page 33. 

Ernst Boessneck, Chemnitz, Germany 

This lock-maker sold locks made by himself to which he affixed 
the name "Yale" and with which he also associated many of the 
long-established catalogue numbers used by us in connection with 
those of our goods which he copied. 

Suit was brought against him in the Royal Saxon High Court of 
Chemnitz, which in 1913 approved and sanctioned an agreement 
entered into by Boessneck whereby he stipulated that he would 
thereafter respect the trade-mark "Yale" as belonging to us, and 
whereby also he recognized and admitted our right to the exclusive 
use of the catalogue numbers in question and to the distinctive dressing 
of our goods which he had imitated. A copy of these proceedings, 
and of the order of the Court thereon, will be found in the Supplement. 



HISTORY OF THE TRADE-MARK "YALE" 27 

Smith-Haines, New York City 

This is an Automobile Supply House which purchased from the 
Lynch Manufacturing Company a lock buckle containing a cylinder 
or pin-tumbler lock, which the defendant then advertised and sold 
as a "Yale Lock-Principle Buckle." Suit was brought against this 
house in 1913 in the U. S. District Court for the Southern District of 
New York. No defence being made, a final decree was entered 
enjoining the defendant from infringing our trade-mark "Yale." 
Copy of the decree and injunction in this case will be found in the 
Supplement. 

General Automobile Supply Co., New York City 

This is an automobile supply house which purchased from the 
Lynch Manufacturing Company a lock buckle containing a cylinder 
or pin-tumbler lock, which the defendant then advertised and sold 
as a "Lynch Yale Lock Buckle." Suit was brought against this 
house in 1913, in the United States District Court for the Southern 
District of New York. The defendant entered an appearance by 
counsel, but finally defaulted in pleading, and a final decree was 
entered enjoining the defendant from infringing our trade-mark 
"Yale." A copy of the decree and injunction in this case will be 
found in the Supplement. 

Motor Car Supply Co., Chicago, Illinois 

This is an automobile supply house which advertised and sold a 
lock valve made by one E. Hill, Jr., as a "Hill Yale Lock Valve." 
Suit was brought against this concern in 1913, in the United States 
District Court for the Northern District of Illinois, Eastern Division. 
No defence was made, and a final decree was entered enjoining the 
defendant from infringing the trade-mark "Yale." A copy of the 
decree and injunction in this case will be found in the Supplement. 

A. J. & G. W. Anderson, Galesburg, Illinois 

This concern manufactured a small wall safe, and equipped the 
same with a lock marked with the word "Gale," and called their 
safe the Gale Wall Safe. Suit was brought against them. They 
served an answer, and moved to dismiss the complaint. When this 
motion came on for hearing, however, the defendant appeared in 
court and consented to the entry of a decree enjoining the defendant 
from infringing our trade-mark "Yale," and from thereafter using the 
word "Gale," or any other word so closely resembling the word 
"Yale" as to be likely to deceive. A copy of the decree and injunc- 
tion in this case will be found in the Supplement. 



28 HISTORY OF THE TRADE-MARK "YALE" 



GROUP II 
SETTLEMENTS 

IN addition to the infringements of the word "Yale" 
which have been stopped or discontinued as the result 
of litigation, the following infringements have been 
discontinued upon remonstrance from us, without the 
necessity of resort to legal proceedings : 

National Recording Safe Co., Chicago, III. 

This Company advertised a pocket safe, which it described as 
being equipped with a "Yale" lock. The lock used was not made 
by the Yale & Towne Mfg. Co., and, upon this fact being called to 
the attention of the National Recording Safe Co., the latter at once 
agreed to discontinue the use of the name "Yale." 

Jones Improved Loose Leaf Specialty Co., New York City 

This Company advertised a loose-leaf ledger, which it stated 
was equipped with a "Safety Yale Lock." The lock used was not 
made by the Yale & Towne Mfg. Co., and, upon this fact being 
brought to the attention of the Jones Improved Loose Leaf Specialty 
Co., by our counsel, that Company agreed entirely to discontinue the 
use of the word "Yale" in connection with products not made by us. 

The Tengwall Co., Chicago, III. 

This Company advertised an automatic round back binder, 
which was described in its advertisements as equipped with a "Yale- 
Style Key." Upon remonstrances from our counsel against this use 
of the word "Yale" in connection with products not made by the 
Yale & Towne Mfg. Co., the Tengwall Co. promptly agreed to dis- 
continue such use. 



HISTORY OF THE TRADE-MARK "YALE" 29 



Altemus & Co., Philadelphia, Pa. 

This Company advertised for sale Altemus Binders equipped 
with "Yale-Style Key," although the locks and keys furnished with 
these binders were not made by the Yale & Towne Mfg. Co. Upon 
remonstrance by our counsel, Altemus & Co. replied that they had 
purchased the locks in good faith, under the supposition that they 
were made by us, and agreed at once to discontinue the use of the 
word "Yale" in connection with these locks. 

C. E. Jennings 1$ Co., New York City 

This Company advertised a Machinist's Tool Case, which was 
described as equipped with a "Yale Pattern Lock." Upon remon- 
strance by our counsel to this use of the word "Yale," in connection 
with a lock not made by the Yale & Towne Mfg. Co., C. E. Jennings 
& Co. agreed to discontinue such use. 

Lynch Manufacturing Company, Madison, Wis. 

This Company manufactured a lock buckle equipped with a 
cylinder lock, and advertised and sold these lock buckles as "Lynch- 
Yale Lock Buckles." Upon remonstrance by our counsel against this 
use of the word "Yale" in connection with locks not made by the 
Yale & Towne Mfg. Co., the Lynch Manufacturing Co. agreed 
promptly to abandon the use of the word "Yale" in connection with 
its products and with products not made by us. 

G. Sommers & Co., St. Paul, Minn. 

This Company advertised a night latch made by another manu- 
facturer, but described in its advertisements as "Yale Pattern." 
Upon remonstrance by our counsel against this use of the word 
"Yale" in connection with articles not made by the Yale & Towne 
Mfg. Co., G. Sommers & Co. agreed to discontinue all such use. 

Collins Hardware Co., Boston, Mass. 

This Company advertised for sale night latches made by another 
manufacturer, as "Yale Pattern Rim Night Latches." Upon remon- 
strance by us it discontinued the use of the word "Yale" in connection 
with articles not made by the Yale & Towne Mfg. Co. 



30 HISTORY OF THE TRADE-MARK "YALE" 



Fisher Automobile Co., Indianapolis, Ind. 

This Company advertised for sale an electric automobile, and 
described it as being equipped with a "Yale" lock, whereas in fact the 
locks used on such automobiles were made by another manufacturer, 
not by the Yale & Towne Mfg. Co. Upon remonstrance by our 
counsel against this use of the word "Yale," the Fisher Automobile 
Co. agreed to discontinue its use except in connection with articles 
made by us. 

E. F. Grell, Hamburg, Germany 

This merchant sold locks as "Yale Locks" which were made by 
other manufacturers. Upon remonstrance by us he agreed to respect 
the validity of our trade-mark, and not to associate the word "Yale" 
with goods made by other manufacturers and sold by him. 



Stagman Hardware Co. and H. J. Simlick, Norwood, Ohio 

H. J. Simlick, a contractor, built some houses for a party in 
Norwood, Ohio, who desired and specified "Yale Locks" on the front 
doors. The contractor purchased from the Stagman Hardware Co. 
locks made by another manufacturer, and applied these locks on the 
houses. Upon objection by the owner that the locks so applied were 
not "Yale" locks, both the contractor and the hardware dealer 
insisted that they were "Yale" locks. Thereupon we instructed our 
counsel to bring suit against both the contractor and the hardware 
dealer for the substitution of other locks on orders calling for "Yale" 
locks, but finally we consented to excuse this offense upon receiving 
the unqualified agreement, both of the contractor and of the hard- 
ware dealer, that hereafter they will respect our trade-mark rights in 
the word "Yale." 

Yale Locksmithing Company, St. Louis, Mo, 

This term was adopted as a trade name by one William Dooley, 
who intended to deal chiefly in our goods. Our counsel advised him 
that this trade name constituted an invasion upon our legal rights 
in the word "Yale" which was bound to lead to confusion and damage. 
He recognized the force of this position, and abandoned the name. 



HISTORY OF THE TRADE-MARK "YALE" 31 



CASES INVOLVING THE ISSUE OF 
"UNFAIR COMPETITION" 

(DESIGNATED UNDER BRITISH PRACTICE AS "PASSING OFF") 



T 



HE common law of England and the United States 
has always recognized that a manufacturer or 
■*■ merchant is entitled to protection against any 
acts of another which are designed, or which tend, to en- 
croach on the rights created by the former in the conduct 
of his business, not only those represented by trade-marks, 
names, or numbers, but also those embodied in novel or 
distinctive designs and in the "dressing" of manufactured 
products. 

This branch of the law embodies what is commonly 
known as the doctrine of "Unfair Competition," or, under 
British law, as "Passing Off," and is of vital importance to 
all manufacturers and to their customers, because intended 
to protect both against substitution and deception. 

The following record gives the essential facts concern- 
ing cases which involve this issue, some of which have been 
litigated and others adjusted by consent. 




32 HISTORY OF THE TRADE-MARK "YALE" 
GROUP III 

"UNFAIR COMPETITION" CASES 
E. T. Fraim, Lancaster, Pa. 

This defendant manufactured and sold a padlock (Fig. 27a) 
closely imitating in external appearance, or "dressing," but not in its 
mechanism, the well-known and popular "Yale" padlock (No. 805) 
shown by the accompanying illustration, Fig. 27. 

Mr. Fraim's agent for the sale 
of these padlocks in New York City, 
in which district the suit was 
brought, was Benjamin Alder. Suit 
was brought against both Mr. Fraim 
and Mr. Alder, and the United States 
Circuit Court of Appeals for the 
fig. 27. fig 27a Second Circuit, after trial of the 

YALE PADLOCK E. T. FRAlk PADLOCK ^ ^ ^^ g^^ ^ fight 

of the Yale & Towne Mfg. Co. to the exclusive use of the characteristic 
design and "dressing" of this padlock, and granted a permanent injunc- 
tion in its favor. The opinion of the Court, and the final decree 
entered in this case, will be found in the Supplement. 

Eagle Lock Co., Terryville, Conn. 

In 1902, the Yale & Towne Mfg. Co., as a characteristic method 
of differentiating its cylinder locks, and especially its cylinder night 
latches, from those of other manufacturers, adopted the use of a 
sunken panel on the head of the lock cylinder, in which panel was 
coined the word "Yale." This constitutes the panel trade-mark shown 
by Fig. 28; page 33. 

In 1906, the Eagle Lock Co. commenced the manufacture of 
cylinder night latches, and placed a sunken panel containing the word 
"Eagle" on the face of the cylinder head. In its original form this 
panel had straight sides, and closely resembled in shape the one 
adopted and used by us. Upon remonstrances from us, the Eagle Lock 
Co. modified its practice by changing the shape of the panel, but still 
continued the use of a sunken panel on the face of the cylinder head 
in which was coined the word "Eagle." Suit was brought by us in 
the Supreme Court of the State of New York, and the case was 



HISTORY OF THE TRADE-MARK "YALE' 



33 



exhaustively tried before Mr. Justice Gerard, the actual trial consum- 
ing almost a month, and a vast amount of evidence being introduced. 
The following illustrations show the cylinder head of the Yale 
& Towne Mfg. Co., with its trade-mark "Yale" in a sunken panel 
(Fig. 28), and also the two forms of cylinder heads adopted by the 
Eagle Lock Co. and above referred to (Figs. 29 and 30). 






Fig. 29 



Fig. 30 



At the close of the trial the Court held as follows: 
"The plaintiff is entitled to an injunction restricting the defend- 
ant from manufacturing or selling night latches of the same general 
style and appearance as the plaintiff's night latches, having cylinder 
heads thereon marked with the word " EAGLE " contained in a 
sunken panel having either straight or slightly curved sides as here- 
tofore used by defendant, or in any other sunken panel so similar to 
plaintiff's as to be likely to mislead purchasers." 

The decision of Mr. Justice Gerard, and the injunction and decree 
granted, will be found in the Supplement. 



C. Ed. Schulte, Velbert, Germany 



This defendant infringed the word "Yale," and also manu- 
factured locks marked with a sunken panel on the cylinder head. 





Fig. 31 



Fig. 32 



These illustrations show the cylinder head of the Yale & Towne 
Mfg. Co. (Fig. 31), and also the cylinder head of the defendant, 
Schulte (Fig. 32). 



34 



HISTORY OF THE TRADE-MARK "YALE" 



The issue pertaining to the right of the Yale & Towne Mfg. Co. 
to the exclusive use of the sunken panel on the heads of lock cylinders 
was tried separately by the Court in Germany, which rendered an 
opinion and decree sustaining the right of the Yale & Towne Mfg. 
Company to the exclusive control of such methods of marking the 
heads of lock cylinders. 

The opinion and decree of the Court in this case will be found 
in the Supplement. 



In addition to the foregoing cases settled by litigation 
may be mentioned the following which, upon remonstrance 
by us, have been settled without litigation by the recogni- 
tion of our rights. 



Penn Hardware Company, Reading, Pa. 

In 1906, the Penn Hardware Company began to make use, upon 
the face or head of its lock cylinders, of a sunken panel containing the 
word "Penn," produced by coining the mark on the metal (Fig. 34). 
Regarding this as an infringement upon our right to the exclusive use 
of the sunken panel on the head of a lock cylinder, we instructed our 
counsel to remonstrate with the Penn Hardware Company, whereupon 
the latter promptly and honorably agreed at once to discontinue the 
use of the sunken panels on the heads of its lock cylinders. 





Fig. 33 



Fig. 34 



These illustrations show the cylinder heads of the respective 
parties. 



HISTORY OF THE TRADE-MARK "YALE" 35 

P. fcf F. Corbin, New Britain, Conn. 

In 1910 this Company adopted a form of sunken panel on the 
heads of its lock cylinders (Fig. 36), but upon remonstrance from 
us, and upon our convincing them that the use of such panel was 
likely to cause confusion between their goods and ours (Fig. 35), to 
the detriment of both parties, they promptly agreed to abandon its use. 





Fig. 35 Fie 36 

These illustrations show the heads of the lock cylinders \ in- 
volved in this case. 

Safe Lock and Hardware Co., Lancaster, Pa, 

This Company manufactured a flat-keyed lock, not a cylinder lock 
but provided with an escutcheon plate having a sunken panel (Fig. 38). 
Upon remonstrance from us, and upon our pointing out that such 
action constituted unfair competition with the characteristic appear- 
ance of the head of the cylinder used with our cylinder locks (Fig. 37), 
agreed to discontinue such use. 





Fig. 37 Fig. 38 

These illustrations show the articles which were involved in 
this case. 

S. R. Slaymaker, Lancaster, Pa. 

This manufacturer brought out a padlock closely imitating the 
appearance and " dressing " of our well-known padlock No. 805 



36 



HISTORY OF THE TRADE-MARK "YALE' 



(Fig. 39), to which he gave the list number 8805 (Fig. 40). Upon 
friendly remonstrance from us he agreed to discontinue both the use of 
the No. 8805 and the close resemblance of his padlock to ours. 





fig. 39 



Fig. 40 



These illustrations show the padlocks which were involved in 
this case. 



E. T. Fraim, Lancaster, Pa. 

This manufacturer put on the market a padlock closely resembling 
our padlock No. 8454, but upon remonstrance from us agreed to 
alter the appearance or "dressing" of his padlock, and to abstain from 
further imitation of our padlock. 



Miller Lock Co., Philadelphia, Pa. 

This Company manufactured a padlock which was closely pat- 
terned in appearance after our popular padlock No. 8454, but upon 
remonstrance from us promptly agreed to alter the external design 
and appearance of its padlock. 



Belleville Hardware Co., Belleville, Ont. 



This Canadian company manufactured and sold a rim night latch 
in connection with which it used the designating number "42." We 
represented to it that we had used the number 42, for more than forty 
years, to designate a certain rim night latch made by us, and that 
we claimed the exclusive use of that number in this connection, where- 
upon the Belleville Hardware Co. agreed to discontinue the use of the 
number 42 for such purpose. 



HISTORY OF THE TRADE-MARK "YALE" 37 



J oh. With. Brunohler, Velbert, Germany 

This manufacturer made a rim night latch closely resembling in 
external appearance our well-known No. 042, and having on the 
head of its cylinder a sunken panel containing the word "Sirius." 
Suit was brought to prevent this encroachment upon our rights, 
which finally was settled by Mr. Brunohler' s entering into an agree- 
ment to pay damages and to abandon the imitation in his own locks 
of the appearance and "dressing" of our No. 042. 



Huber Mfg. Co., Long Island City, N. Y. 

This manufacturer made a night latch closely resembling our 
No. 042, which it marketed under the number 240. Our counsel took 
the matter up with them and their attorney, and after a thorough 
investigation of the history of the numbers two and four in connec- 
tion with our latches, they agreed to abandon their number, which 
it was recognized was likely to cause their goods to be confused with 
ours. This concern also used the word "Paracentric" in referring 
to its latches. On calling to their attention the fact that the word 
"Paracentric" had been registered as a trade-mark of the Yale & 
Towne Mfg. Co., they at once abandoned the use of this word. 



SUPPLEMENT 

DECISIONS AND DECREES IN 
COURT CASES 



DECISIONS AND DECREES 
IN COURT CASES 

Johnson Foundry 1$ Machine Works, Limited, Battle Creek, Mich. 

At a Session of the Circuit Court of the United States for the Eastern Dis- 
trict of Michigan, continued and held pursuant to adjournment at the District 
Court Room in the City of Detroit, on Tuesday, the sixth day of June in the year 
of our Lord one thousand nine hundred and five. 

Present: The Honorable Henry H. Swan, 

District Judge. 



In Equity. 

No. 3887. 



This suit having been duly commenced by the filing of the bill of complaint 
herein on the 7th day of April, 1905, and the service of the subpoena upon the 
defendant the 10th day of April, 1905, and the said defendant having appeared 
by its solicitor, D. C. Salisbury, and consenting to the entry of this decree, Now, 
on motion of O. Scott Clark, solicitor and of counsel for the complainant, it is 

ADJUDGED AND DECREED that the allegations in the said bill of com- 
plaint respecting the ownership and exclusive rights of the complainant in and to the 
word "Yale" as a trade-mark and trade-name for hardware, are true, and the 
word "Yale" applied to builders' hardware in the markets of the United States and 
elsewhere denotes to the public and buyers and users of said hardware the manu- 
facture and product of the complainant, The Yale & Towne Manufacturing Com- 
pany, and the complainant has a trade-mark and trade-name in the said word as 
applied to builders' hardware as alleged in the said complaint; and it is further 

ADJUDGED AND DECREED, that the defendant, Johnson Foundry & 
Machine Works, Limited, by manufacturing, selling, advertising, and offering 
for sale cloak and hat hooks and hall trees under the name "YALE," and with the 
said name cast, impressed, or marked thereon have infringed upon the exclusive 
right of the complainant to the use of the said name to designate hardware of 
its manufacture; and it is further 

ORDERED, ADJUDGED AND DECREED that an injunction forthwith 
issue out of this Court directed to the said defendant, Johnson Foundry & Machine 



The Yale & Towne Manufactur- 
ing Company. 

Complainant, 
vs. 
Johnson Foundry & Machine 
Works, Limited, 

Defendant. 



42 HISTORY OF THE TRADE-MARK "YALE" 

Works, Limited, perpetually and forever enjoining and restraining said defendant, 
its members, officers, servants, agents, attorneys, and workmen, and each and 
every of them, from manufacturing, selling, advertising, or offering for sale, or 
causing to be manufactured, sold, advertised, or offered for sale cloak and hat 
hooks or hall trees or builders' hardware of any description under the name "YALE" 
or with the said name cast, impressed, or marked thereon; or in any manner in- 
fringing upon the sole and exclusive right of the complainant to use said word as a 
trade-mark or trade-name to designate hardware of its manufacture. 

Dated, June 6, 1905. Henry H. Swan, 

District Judge. 

INJUNCTION 

THE PRESIDENT OF THE UNITED STATES TO JOHNSON FOUNDRY 
& MACHINE WORKS, LIMITED, ITS MEMBERS, OFFICERS, SERVANTS, 
AGENTS, ATTORNEYS, AND WORKMEN, GREETING: 

WHEREAS, it has been represented to us in our Circuit Court of the United 
States for the Sixth Circuit, Eastern District of Michigan, Southern Division, that 
the complainant is the owner and has the exclusive rights in and to the word Yale 
as a trade-mark and trade-name for hardware, and the word Yale, applied to 
builders' hardware in the markets of the United States and elsewhere, denotes to 
the public and buyers and users of said hardware the manufacture and product 
of the complainant, The Yale & Towne Manufacturing Company, and that you 
the said defendant by manufacturing, selling, advertising, and offering for sale 
cloak and hat hooks and hall trees under the name Yale and with the said name 
cast, impressed, or marked thereon, have infringed upon the said exclusive rights of 
the complainant to the use of the said name to designate hardware of its manu- 
facture. 

NOW, THEREFORE, we do strictly command and enjoin you the said 
Johnson Foundry & Machine Works, your members, officers, servants, agents, 
attorneys, and workmen, and each and every of them permanently and forever 
from manufacturing, selling, advertising, offering for sale, or causing to be manu- 
factured, sold, advertised, or offered for sale, cloak and hat hooks or hall trees or 
builders' hardware of any description under the name Yale, or with the said name 
cast, impressed, or marked thereon; or in any way infringing upon the sole and 
exclusive right of the said complainant, The Yale & Towne Manufacturing Com- 
pany, to use said word as a trade-mark or trade-name to designate hardware of its 
manufacture. 

Witness, the HON. MELVILLE W. FULLER, Chief Justice of the United 
States at the City of Detroit, State of Michigan, on the sixth day of June, 1905. 
(Copy Seal) (Sgd.) 

Walter S. Harsha, 
Clerk U. S. Circuit Court, Eastern District of Michigan. 
Due service of the above and foregoing Injunction is hereby acknowledged 
and certified copy also duly served this date. 

(Sgd.) Johnson Foundry & Machine Works, Limited, 
Dated, June 7, 1905. Defendant. 

By EUGENE MILLER, President, 
D. C. SALISBURY, 
Solr. for defendant. 



HISTORY OF THE TRADE-MARK "YALE" 43 

Victor M. Grab & Company, Chicago, III. 
DECREE 

IN THE CIRCUIT COURT OF THE UNITED STATES, 

NORTHERN DISTRICT OF ILLINOIS, 

EASTERN DIVISION. 

PRESENT: HONORABLE CHRISTIAN C. KOHLSAAT, CIRCUIT JUDGE. 

FRIDAY, MAY 6, 1910. 



The Yale & Towne Manufacturing Co. 



vs. 
Victor M. Grab 



No. 29,337. 



This cause coming on to be heard on final hearing, on bill, answer, replication, 
and proofs, Louis H. Porter and Offield, Towle, Graves & Offield — solicitors for 
complainant, and Herman Frank, Fred W. Kraft, and Nathan D. Kaplan — solici- 
tors for defendant, and the case being argued by Charles K. Offield in behalf of 
complainant, and by Herman Frank in behalf of defendant, and thereupon, upon 
due consideration, and the court being fully advised thereof, it is hereby 

ORDERED, ADJUDGED AND DECREED 

1. That the word or name "YALE" is a good and valid trade-mark or name, 
adopted and originated by the predecessors of said complainant, and in and to 
which the said complainant has good, valid, and exclusive title, by reason of such 
adoption and use by complainant and its predecessors in its business. 

2. That said complainant is entitled to the exclusive use or application of said 
word or name "YALE" as a trade-name or mark, in connection with builders' 
hardware of any kind or description manufactured by said complainant, and in 
any ramification of said complainant's business. 

3. That the said defendant — Victor M. Grab — by reason of the association 
and use of the said word or name " YALE " upon, and in connection with the manu- 
facture and sale of builders' hardware, such as hall trees, hat trees, coat hooks, 
hat hooks, etc., and in advertisements, circulars, letters, etc., has violated and 
infringed the exclusive right of said complainant therein and thereunder, and has 
unfairly competed with complainant by such unlawful use, exhibition, and appro- 
priation of said complainant's trade-name, or word "YALE." 

4. That the said complainant do recover from said defendant — Victor M. 
Grab — the gains and profits made by him, and the damages sustained by said com- 
plainant, by reason of said unlawful use and appropriation of said complainant's 



44 HISTORY OF THE TRADE-MARK "YALE" 

trade-name or mark "YALE," as well as the costs and charges in said suit to be 
taxed, and that said cause be referred to Hon. James S. Hopkins, as Master, to 
ascertain the amount of such gains and profits, and the damages sustained by said 
complainant by reason of such unlawful acts. 

5. That a writ of injunction issue according to the prayer of the bill of com- 
plaint from and under the seal of this court, restraining and enjoining the said 
defendant — Victor M. Grab — his agents, servants, employes, attorneys, and work- 
ingmen, and all others acting by or under his authority, from making, using, or 
selling builders' hardware of any description, such as coat hooks, hat hooks, hall 
trees, etc., having associated or allied therewith in any way, said complainant's 
trade-name, or mark, or word "YALE," or any imitation thereof, and from the use 
or display of said word or name "YALE" in any form of advertisement, circulars, 
letters, etc., in connection with his said business, and from in any way unfairly 
competing with said complainant by the use of, or appropriation of said name or 
word "YALE," or any simulation or imitation thereof. 

Kohlsaat, 

Judge. 



IN THE CIRCUIT COURT OF THE UNITED STATES, 
NORTHERN DISTRICT OF ILLINOIS, 
EASTERN DIVISION 
PRESENT: HONORABLE CHRISTIAN C. KOHLSAAT, CIRCUIT JUDGE. 
SATURDAY, NOVEMBER 19, 1910 



The Yale & Towne Manufacturing Co. 
vs. 

Victor M. Grab, doing business under the 
firm name and style of Victor M. Grab 
& Co. 



No. 29,337. 



FINAL DECREE 

It appearing to the Court that the parties above litigant have agreed upon a 
settlement, without further proceedings before the Master, and that the defendant 
has accounted for, and paid to the complainant, the damages and profits suffered 
by and accruing to the above-named complainant, and the Court being fully 
advised thereof, the interlocutory decree heretofore entered on the sixth day of 
May, 1910, is hereby made final. 

Kohlsaat, 

Judge. 



HISTORY OF THE TRADE-MARK "YALE" 45 



INJUNCTION 

CIRCUIT COURT OF THE UNITED STATES, 

NORTHERN DISTRICT OF ILLINOIS, 

EASTERN DIVISION, 



THE UNITED STATES OF AMERICA 

To Victor M. Grab, and to your counselors, attorneys, solicitors, trustees, agents, 
clerks, employes, servants, and workmen, and to each and every of you, GREET- 
ING: 

WHEREAS, It hath been represented to the Judges of our Circuit Court of 
the United States for the Eastern Division of the Northern District of Illinois in 
Chancery sitting, on the part of The Yale & Towne Manufacturing Co., com- 
plainant, in its certain bill of complaint, exhibited in our said Circuit Court, on the 
Chancery side thereof, before the Judges of said Court, against you, the said 
VICTOR M. GRAB, to be relieved touching the matters complained of. In which 
said bill it is stated, among other things, that you are combining and confederating 
with others to injure the complainant touching the matters set forth in said bill, 
and that your actings and doings in the premises are contrary to equity and good 
conscience. And it being ordered that a Writ of Perpetual Injunction issue out of 
said Court, upon said bill, enjoining and restraining you, and each of you, as 
prayed for in said bill; We, therefore, in consideration thereof, and of the par- 
ticular matters in said bill set forth, do strictly command you, the said VICTOR 
M. GRAB, your counselors, attorneys, solicitors, trustees, agents, clerks, employes, 
servants and workmen, and each and every of you, and all others acting by or under 
your authority DO ABSOLUTELY DESIST AND REFRAIN from making, 
using or selling builders' hardware of any description, such as coat hooks, hat 
hooks, hall trees, etc., having associated or allied therewith in any way, said com- 
plainant's trade-name or mark, or word " YALE," or any imitation thereof, and from 
the use or display of said word or name "YALE" in any form of advertisement, 
circulars, letters, etc., in connection with your said business and from in any way 
unfairly competing with said complainant by the use of, or appropriation of said 
name or word "YALE," or any simulation or imitation thereof; until this Honor- 
able Court, in Chancery sitting, shall make other order to the contrary. Hereof 
fail not, under the penalty of what the law directs. 

To the Marshal of the Northern District of Illinois, to execute, and return in 
due form of law. 

Witness, the HON. MELVILLE W. FULLER, Chief Justice of the United 
States of America, at Chicago, in said District, this twenty-fifth day of May, in 
the year of our Lord one thousand nine hundred and ten, and of our Independence 
the one hundred and thirty-fourth. 

John H. R. Jamar, 

Clerk. 
ISeal] 



46 HISTORY OF THE TRADE-MARK "YALE" 



Kate Gretzer, New York City 

CIRCUIT COURT OF THE UNITED STATES, SOUTHERN DISTRICT 

OF NEW YORK 
PRESENT: HON. E. HENRY LACOMBE, CIRCUIT JUDGE. 



The Yale & Towne Manufacturing Co., 

Plaintiff, 
against 
Kate Gretzer, 

Defendant. 



In Equity. 



The bill of complaint, duly verified, having been duly filed in the above en- 
titled case, on the 18th day of May, 19 10; and the subpcena ad respondendum having 
been issued, and returned on or about the 19th day of May, 19 10; and it appearing 
therefrom that the said subpcena was duly served on Kate Gretzer, the defendant 
herein, personally, on the said 19th day of May, 1910; and it appearing that the 
said defendant, Kate Gretzer, duly appeared herein by her solicitor, D. Strassman, 
Esq., on or about the 1st day of July, 1910; and it further appearing that the de- 
fendant, Kate Gretzer, has failed to plead, answer, or demur to the said bill of 
complaint herein, and is in default therefor; and it further appearing that on the 
9th day of August, 1910, the complainant herein duly entered a rule and order that 
the bill herein be taken pro confesso against the defendant, Kate Gretzer, for want 
of a pleading, and that more than thirty days have elapsed since the entry of the 
said rule, and that no further proceedings have been had in the case, or taken since 
the said rule and order was entered ; and it further appearing that the complainant 
has expressly waived an accounting herein ; 

Now, therefore, upon motion of Louis H. Porter, Esq., solicitor for complain- 
ant, it is hereby 

ORDERED, ADJUDGED AND DECREED: 

First. That the complainant is entitled to the exclusive use of the word or 
name" YALE "as a trade-mark and trade-name, in connection withlocks of all kinds. 

Second. That the said defendant, Kate Gretzer, has violated complainant's 
exclusive rights in and to the said word "YALE," by selling locks not by the com- 
plainant manufactured, but manufactured by other makers, upon the representation 
that the said locks were "YALE" locks, "YALE" padlocks, and "YALE" night 
latches. 

Third. That the complainant have judgment against the defendant for the 
costs of this action, together with the disbursements to be taxed by the Clerk, and 
as taxed amounting to thirty-four and 52-100 dollars, and that the complainant 
have execution therefor. 

Fourth. That an injunction issue herein perpetually restraining and enjoining 
the said defendant, Kate Gretzer, her agents, servants, employes, and attorneys, 
and workmen, and all others acting by or under her authority, from in any form or 
manner whatsoever making use of the word or name "YALE" in selling or offering 
for sale any lock not by or for complainant made. 
Dated, New York, September 30, 1910. E. Henry Lacombe, 

U. S. C. J. 



HISTORY OF THE TRADE-MARK "YALE" 47 



C. Ed. Schulte, Velbert, Germany 

DECISION 

Announced In the King's Name: 

June 28, In the matter of the firm of The Yale & Towne Manufacturing 

1912. Company of Stamford, Connecticut, United States of America, 

plaintiffs, 

represented, with reference to their legal trade-mark rights, by 
the merchant Adolf Steinhauer, of Hamburg, Alter Wandrahm 15, 
authorized representative in the lawsuit; Attorney Dahmen, 
Counselor of Justice, of Elberfeld, versus the firm of C. Ed. Schulte, 
of Velbert, defendant, 

authorized representative in the lawsuit: Attorneys Esch and Dr. 
Maull, of Elberfeld, on account of plagiarism, trade-mark violation 
and unfair competition, the Fifth Civil Chamber of the Royal 
Provincial Court of Elberfeld, in consequence of the verbal hearing 
of Provincial Court Director Dr. Bellerstein and the Provincial 
Judge Dr. Cadenbach, has rendered the following verdict: 
The defendant is condemned 

I. aa) to grant the cancellation of the trade-mark No. 1366 19 in the Trade 
Mark Roll of the Imperial Patent Office, 

a) to discontinue the use of his trade-mark No. 1366 19 for designating safety 
locks and padlocks of all kinds, under a penalty of 1500 marks for each offence. 

b) the fact Is established that the defendant is obliged to indemnify the plaintiffs 
for whichever damage has arisen to the same through the use of trade-mark No. 
136619 by the defendant, 

c) it is decreed that on the defendant's safety locks and padlocks and on his 
business announcements the trade-mark No. 1366 19 be removed and that, so far 
as the removal is not possible, the articles provided with the trade-mark be de- 
stroyed. 

II. a) The defendant is enjoined, under a penalty of 1500 marks for each of- 
fence, from continuing to make and disseminate any further the circulars, in- 
structions for use and "warnings" such as are found in the records, Sheets 24, 25, 
26, 31, and 32. 

b) the fact is established that the defendant is obliged to indemnify the plaintiffs 
for the damage caused them by the circulation of the printed matter indicated 
under a). 

c) it is ordered that the printed matter indicated under 3) which is in the de- 
fendant's possession and the devices used for producing this printed matter and 
owned by the defendant be destroyed. 

III. a) the defendant is condemned, under penalty of a court fine of 1500 marks 
for each offence, to stop the use of the Nos. 42, 42L, 42N, 43, 343, 84XP, and 
84XPN for designating his goods. 

b) the fact is established that the defendant is obliged to indemnify the plaintiffs 
for the damage caused them by the use of the Nos. mentioned under a). 

c) the plaintiffs are adjudged the right to make known the following, within one 



48 HISTORY OF THE TRADE-MARK "YALE" 

month after this judgment becomes legally valid, in the Deutsche Eisenhandler 
Zeitung, the Eberswalder Offertenblatt and in a paper issued at Velbert at the 
defendant's expense: 

"The defendant has been condemned, under penalty of 1500 marks for each 
offence, to stop the use of the numbers 42, 42L, 42N, 43, 343, 84XP, 84XPN." 
IV. The defendant is condemned, under a penalty of 1500 marks for each offence, 
to stop the designation "Yale System" for the locks produced by him. The 
plaintiffs' more extensive claim is rejected. 

The judgment is declared suspectible of temporary execution against a deposit 
of 5,000 marks. 

For the rest, the Court's decision is reserved. 



STATEMENT OF FACTS 




The plaintiffs have deposited in their favor under No. 23502 in the Trade Mark 
Roll of the Imperial Patent Office on the strength of their application of March 
16, 1897, the trade-mark (sheet 23 of the Records) for 
ironmongery used by builders and plumbers. The same 
has the shape of a clover leaf in which the letters Y and 
T are inserted. This trade-mark was renewed on March 
14, 1907, i.e., in good season, and is still valid as a trade- 
mark. 

The plaintiffs furthermore have registered under No. 
104668 in the Trade Mark Roll of the Imperial Patent Office 
the trade-mark Yale (sheet 83 of the Records) for locks, 
their parts and keys, on the strength of application filed 
May 18, 1907. 

The defendant has registered in his favor under No. 
136619 in the Trade Mark Roll of the Imperial Patent Office on the strength of 
the application of September 3, 19 10, the trade-mark (sheet 81 of the Records 
covering locks). 

The plaintiffs, The Yale & Towne Manufacturing Com- 
pany, point out that their trade-mark contains the initial 
letters of their firm name, Y and T, and that these letters 
were chosen with special reference to that fact. 
I. aa) and a, b, c): The plaintiffs assert: 
A comparison of their trade-mark with the defendant's, 
which is registered for the same class of goods as the plaintiffs' 
trade-mark No. 23502, shows at once such a concordance 
of the two trade-marks that a cursory contemplation of 
the same by the average buyer is very apt to create the 
danger of confounding the goods provided with either 
trade-mark with each other. The fact that the defendant uses the letter Y in 
his trade-mark which has absolutely no bearing on him or his firm name and 
that the defendant never states his firm name, makes it appear that it is in reality 
the defendant's precise object to bring about the possibility of his trade-mark 
being mistaken for the plaintiffs', as the Y in the plaintiffs' trade-mark cor- 
responds with the firm name Yale, and Yale is to-day a generally known designa- 
tion of safety locks made by the plaintiffs. The small deviations intentionally 




HISTORY OF THE TRADE-MARK "YALE" 49 

chosen by the defendant for his trade-mark are without any importance for the 
picture as a whole of his trade-mark, i.e. the total impression created, especially 
with reference to the fact that the trade-mark is not reproduced on the locks in the 
same size and clear outline as in the illustrations presented herewith. If however, 
there is danger of confusion resulting (Section 20 of the Trade Mark Law), and, as 
a matter of fact, such confusion has resulted, as in the case of the firm of Fischer 
& Soehne, the defendant is obliged to cancel his trade-mark according to Section 9, 
Figures 1 and 3 of the Trade Mark Law, and the plaintiffs' claim for discontinuance 
is also well founded, as the request for cancellation implies also the discontinuance 
of the use of the trade-mark; at any rate, the discontinuance claim must be granted 
on the strength of Section 1, of the law against unfair competition. 

The defendant also uses this trade-mark on his circulars and letters (sheet 24 
of the Records), on his Instructions for use and the so-called "Warnings." 

The defendant violates the plaintiffs' trade-mark claim knowingly. He is 
cognizant of it. That is shown by the letter written by him to the firm of Schmidt 
& Meldau (sheet 36 of the Records) ; at the very least, the defendant has acted in a 
grossly negligent manner. The defendant, therefore, must also be liable to the 
plaintiffs for|damages according to Section 14 of the Trade Mark Law, and con- 
sequently according to Section 19 of the Trade Mark Law the claim for removal of 
the trade-mark on the defendant's goods and business announcements is also well 
founded. 

Furthermore the plaintiffs assert: for designating their goods they are using 
a vignette in such a way that their criterion Yale stands inside of a figure connected 
at the top and bottom by parallel double strips and at both sides by semicircles. 
The plaintiffs assert that this vignette is known in interested trade circles as the 
criterion of the plaintiffs' goods and name witnesses to prove this. The defendant, 
they say, uses exactly the same vignette with the initial letter of the word Yale, the 
letter Y, which has absolutely no bearing on his firm name. The defendant, for 
the purpose to deceive, applies this vignette to goods of the same kind, and at the 
identical place as the plaintiffs', i.e. on the head and cylinder. The defendant 
thereby violates Section 15 of the Trade Mark Law. This vignette, too, is used 
by the defendant in conscious violation of the plaintiffs' make-up. The defendant, 
therefore, is also obliged to render damages to the plaintiffs on account of the use 
of this vignette. The discontinuance and the removal claims in this connection are 
also well founded. 

The plaintiffs also point out that they are citizens of the United States of 
America, that as their domestic representative, as prescribed by Section 23, para- 
graph 2, of the Trade Mark Law, the merchant Steinhauer, of Hamburg, is registered, 
and that they are entitled on the strength of the international Union Treaty to 
which Germany and the United States both belong, according to Article 2 of this 
Treaty, to claim protection for their trade-mark in Germany. 

II. The plaintiffs submit (enclosures F and Fl) two of their catalogues and 
for purposes of comparison with the same (sheets 24 and 25 of the Records), an 
announcement made by the defendant. 

This announcement made by the defendant — so the plaintiffs assert — contains 
a faithful reproduction of the technical cuts and explanations circulated by the 
plaintiffs. Pages 3 and 4 of the plaintiffs' catalogue F are faithfully reproduced 
by the defendant on the inside page of the defendant's announcements (sheets 
24 and 25 of the Records). The drawings agree perfectly, so that any difference is 
not noticeable at all. The plaintiffs state at the top of pages 3 and 4 that the 



50 HISTORY OF THE TRADE-MARK "YALE" 

illustrations are one-half original size, even this statement of the dimensions is 
given by the defendant in his circular. Likewise the notation "Changes in keys 
nearly unlimited " printed by the plaintiffs in italics has been used by the defendant, 
although with the one slight deviation: "The variety in keys is unlimited." 

In the catalogue Fl S, 7, etc., the plaintiffs use the phrase "Key changes prac- 
tically unlimited"; in the English part of his circular, pages 24 and 25, of the 
Records, the defendant copies this sentence literally. 

The drawing on page 4 of the circular (sheet 25 of the Records), exactly agrees 
with the drawing on pages 68 and 69 in the plaintiffs' catalogue F.). 

An additional concordance consists of the additional technical drawings 
and numerical designations, sheets 24V, 25 and 25V, of the defendant's circular 
and those on pages 3, 4, and 69 of the plaintiffs' catalogue F. 

The plaintiffs send out instructions for use with all their safety locks (sheet 
28 of the Records), headed "Warning." This warning, too, has been faithfully 
reproduced by the defendant (sheet 26 of the Records) both pictorially and as to 
the text. On one side, the defendant, in this connection, shows the cross section of a 
closing cylinder belonging to a mortise-lock, and this cross section corresponds or 
conforms exactly to that of the plaintiffs'. On the other side, the defendant, in 
exact concordance with the plaintiffs' drawings, reproduces the back view of the 
screwing method, one of which is intended for the closing cylinder of a box lock 
and the other one for a mortise-lock. This, too, is taken from the plaintiffs' 
"Warning." 

The plaintiffs also made up a set of instructions (sheet 29 of the Records). 
This, too, has been imitated by the defendant (sheets 31 and 32 of the Records). 

On page 2 of the two instructions for use a technical description of the attach- 
ment of the safety lock to the door is reproduced which exactly corresponds with the 
plaintiffs' down to the arrows and letters. Even the text of the instructions of the 
defendant is drawn up in imitation of the plaintiffs' in all essential parts. Likewise 
the picture showing the connecting rod c), and the connecting rod d) in the defen- 
dant's instructions, as well as the text in the instructions referring to this picture in 
Nos. 2 and 6, have been made in faithful imitation of the plaintiffs' instructions 
both as to the picture and the wording. 

Finally, the defendant has also imitated in all detail parts in the picture on the 
front page of their calendar (sheet 24 of the Records) showing the attachment of the 
lock to the door, the plaintiffs' picture (sheet 33 of the Records), which the plain- 
tiffs had published. The defendant then carried the imitation so far as to arrange 
on his picture 5 sets of tumblers while, as a matter of fact, he has only 4 sets on the 
market, all told. 

Aside from the fact that the defendant, by this conduct, has violated section 
1 of the law against unfair competition to the plaintiffs' detriment, he has also 
violated Section 1, Figure 3, Section 3, Section II, Paragraph 1, of the law concern- 
ing the author's rights to works of literature and compositions, dated July 19, 191 1. 
This involves technical illustrations of an instructive tenor, i.e. printed matter be- 
longing to the plaintiffs which is protected by the law of July 19, 191 1. 

The plaintiffs, therefore, make this motion according to Sections 36 and 42, 
of this law and point out that as citizens of the United States of America they are 
entitled on the strength of the state treaty of January 15, 1892, to asset protective 
claims on account of violation of copyright privileges in Germany. 

III. The defendant, furthermore, has appropriated the numerical designa- 
tions peculiar to the plaintiffs under which they sell their goods — the plaintiffs 



HISTORY OF THE TRADE-MARK "YALE" 51 

are in the habit in their business to designate the locks by numbers to facilitate 
and expedite the ordering of their locks — for the purpose of creating, among the 
buyers, to whom the defendant is offering his goods, the erroneous impression 
that the goods offered emanate from the plaintiffs' business. Neither on the 
labels or on the goods themselves or on the packings used by the defendant, on his 
instruction sheets or on his warning card is the origin of the goods as being the de- 
fendant's business or any reference to the defendant's firm contained. The de- 
fendant evidently intentionally withholds his name so as to more successfully cover 
up the deception practised by him by making the public believe that the goods 
emanate from the plaintiffs' factory. Withal, the defendant sells about 20 per 
cent, cheaper than the plaintiffs and quotes accordingly, thus creating by his quota- 
tions the appearance of a particularly advantageous offer. In particular does the 
defendant use one of the plaintiffs' principal numbers, i.e. No. 42. In the plain- 
tiffs' catalogue No. FS 3, the numbers 42 and 343 are indicated. The same numbers 
are given by the defendant on page 2 of his circular (sheet 24 of the Records), in 
the illustration there reprinted. On pages 4 and 5 of their catalogue the plaintiffs 
mention No. 43 ; the defendant uses the same number to indicate the imitation of the 
plaintiffs on page 3 of the circular, (sheet 25 of the Records). On page 69 of their 
catalogue the plaintiffs mention the Nos. 84X P and 84X PN. These numerical 
designations solely connected with the plaintiffs' business are added by the defen- 
dant to the imitation page 4 of his circular (sheet 25 of the Records). 

The plaintiffs particularly point out that the defendant is not content to use 
the plaintiffs' numbers, but that he has even added to the numbers the same 
letters L, N, P, and PN, which are peculiar to the plaintiffs. 

The defendant uses these numbers of the plaintiffs with dishonest intentions; 
that is shown also by the defendant's letter of August 29, 191 1, to the firm of 
Schmidt & Meldau, in which he endeavors to induce this firm to proceed with him 
against the American competition which refers exclusively to the plaintiffs. 

The merchant Landmann, of Bochum, and the traveler Otto Simon, of Ham- 
burg, were also told by the defendant's traveler that the defendant was copying 
the plaintiffs' goods faithfully, on which account he was using the letter Y. The 
exactitude with which the defendant imitates is also shown by a comparison of 
the locks 42 of the plaintiffs with the imitation on page 2 of the circular of the 
defendant (sheet 24 of the Records). The defendant thereby again violates the 
law against unfair competition. 

According to Article 10b of the Union Treaty the plaintiffs are also entitled to 
the protective claim on the strength of the law against unfair competition. 

IV. On his letter-heads the defendant uses for his locks the designation "ac- 
cording to the American Yale system." The defendant even goes so far as to 
designate his locks as Yale locks. The defendant thus usurps the plaintiffs' trade- 
mark No. 104668. At any rate the defendant thereby violates this trade-mark of 
the plaintiffs. The plaintiffs, therefore, move: I. aa) that the defendant be con- 
demned to agree to the cancellation of the trade-mark No. 1366 19 in the Trade 
Mark Roll of the Imperial Patent Office. 

a) that the defendant be condemned to stop, under a court penalty of 1500 Marks 
for each offense, the use of the clover leaf picture employed by him with the letter 
Y, and the vignette used by him, parallel at the top and bottom and semi-circular 
at both sides with the letter Y, for designating safety locks and padlocks of all kinds; 

b) that the defendant be condemned to indemnify the plaintiffs for the damage 
caused them by the use mentioned under a; 



52 HISTORY OF THE TRADE-MARK "YALE" 

c) that the court decree that on the defendant's goods and on his business an- 
nouncements the picture of the clover leaf with the letter Y and the vignette men- 
tioned under a be removed by an official of the court and that, so far as this is not 
possible, the articles provided with the picture or with the vignette be destroyed; 

II. a) that the defendant be enjoined, under penalty of 1500 Marks for each 
offence, from again making or disseminating the circulars, instructions for use or 
"warning" filed with the Clerk of the Court, 

b) that the defendant be condemned to indemnify the plaintiffs for the damage 
caused by the dissemination of this printed matter; 

c) that the court decree that the printed matter in the defendant's possession, 
mentioned under a), and the devices used for producing this printed matter and 
owned by the defendant, be destroyed by an official of the Court; 

III. a) that the defendant be condemned, under penalty of 1500 Marks for each 
offence, to discontinue the use of the Nos. 42, 42L, 42N, 43, 343, 84X P and 84X 
PN, for designating his goods; 

b) that the defendant be condemned to indemnify the plaintiffs for the damage 
caused them by the designations mentioned under III, a; 

c) that the court decree that the decreeing part of the judgment under III be made 
known, at the defendant's expense, within a period to be determined by the court, 
in the Deutsche Eisenhandlerzeitung, in the Eberswalder Offertenblatt, and in a paper 
published in Velbert; 

IV. That the defendant be condemned, under penalty of 1500 Marks for each 
offence, not to use the designations "Yale" and "Yale System" for the locks pro- 
duced by him. 

That the defendant be imposed the costs of the lawsuit and that the judgment 
be declared susceptible of temporary execution against a deposit. 

The defendant moves: 

That the suit instituted be dismissed with costs, that, in the event of the 
defendant being found guilty, a stay of execution be granted against a deposit. 

He disputes the plaintiffs' assertions, in particular the one that the plaintiffs' 
locks are generally known in interested trade circles as Yale locks. He points out 
that the plaintiffs' locks are protected neither by a patent or by a utility pattern. 
The defendant, therefore, claims to have a right to copy them. 

As against the various motions made by the plaintiffs the defendant asserts: 

With reference to I: that he is the registered owner of the trade-mark No. 
1366 19, whose cancellation and the discontinuance of whose use are asked by the 
plaintiffs on account of the alleged danger of confusion in connection with the 
trade-mark No. 23502. Such danger of confusion, however, he states, does not 
exist any more than a violation of the law against unfair competition. The form 
chosen by the defendant had suggested itself from the very first, because the defen- 
dant had intended to arrange his trade-mark on the ring of the key and in the outer 
round surface of the head and the cylinder. The outward form of the two trade- 
marks in itself shows fundamental differences according to the defendant. Fur- 
thermore, a special deviation exists in that in the defendant's trade-mark "& T" is 
lacking and that the defendant's trade-mark shows under the letter Y a parallel 
line to the outer enclosure with a trident at each of its ends. There is, therefore, 
according to the defendant, no danger of confusion in the sense of the trade-mark 
law. Likewise all intention to deceive is lacking on the defendant's part. In 
particular should such intention not be deduced from the defendant's failure to in- 
dicate his firm, since he had to omit this at the express request of his exporters. 



HISTORY OF THE TRADE-MARK "YALE" 53 

Since, according to Figure I of Section 4 of the trade-mark law, one letter is not 
susceptible of protection as a designation of goods, the plaintiffs cannot assert that 
in the defendant's trade-mark the letter Y constitutes its characteristic and essen- 
tial part. At any rate any clue or basis is lacking for the assumption that the 
defendant, even if a trade-mark violation should be assumed, has acted knowingly 
or even in a grossly negligent manner. 

The defendant disputes that the vignette used by the plaintiffs with the word 
Yale is a make-up of their goods in the sense of Section 15 of the trade-mark law. 
Furthermore, the vignette used by the defendant would not violate the plaintiffs' 
alleged make-up anyway. The outer border is not an extraordinary one, but is 
being used every day. The word Yale does not agree with the letter Y either and 
cannot be confounded with it. The fact that the letter Y does not occur in the 
firm or in the defendant's name, is without any consequence, Neither does the 
fact that the defendant arranges his vignette in the same place as the plaintiffs 
prove anything, since as a matter of course only such places of the goods are suit- 
able for that purpose as project prominently. The defendant also disputes that 
he is using his vignettes for the purpose of deceiving the public, particularly for 
bringing about confusion in connection with the plaintiffs' manufactures. 

With reference to II : Neither the illustrations nor the texts of the defendant's 
printed matter agree with the corresponding parts of the plaintiffs' printed matter; 
the lock boxes are different, consequently also the press buttons. Aside from this, 
the defendant cannot be restrained from advertising his locks, by the manufacture 
of which he does not violate any protective rights of the plaintiff, by means of printed 
matter and from publishing illustrations of the locks. That is all the defendant 
has done. He also has a right to publish instructions along with the rest. The 
defendant has not taken over anything literally from the plaintiffs' text. The de- 
fendant makes locks with 3 to 6 sets of tumblers and not only with 4 sets. 

Furthermore, the catalogues as published by the plaintiffs do not come under 
the provisions of the law concerning copyright of works of literature and musical 
compositions, as such catalogues are not the product of individual intellectual 
work and do not possess an instructive character. If necessary, the defendant 
wishes to lay claim to the protection of Section 19, paragraphs I I.e., as this involves 
independent work performed by the defendant. 

With reference to III : The use of some numbers of the plaintiffs does not run 
counter to the general views held in business intercourse, but corresponds with 
what is frequently practised. It is customary in the lock line that for reasons of 
practical convenience numbers become established for generally distinguishing 
and designating certain classes of goods which possibly were originally taken from 
some one concern's catalogue (Proof: Opinion Sheets 49 and 50 of the Records). 
Furthermore, the numbers mentioned by the defendant are generally known and 
the fact is precluded that confusion might be caused by the numbers. The de- 
fendant also submits a number of catalogues of different firms which are to show the 
correctness of his statements concerning the numbers. The defendant's letters to 
the firm of Schmidt & Meldau does not prove any dishonest intention on the de- 
fendant's part, as the defendant has the right to compete with the plaintiffs. 

With reference to IV : The defendant has a right to speak on his letter-heads 
of locks "according to the American Yale system." It is just the addition "Sys- 
tem" that makes it clear that it was the defendant's intention to preclude the 
possibility of confusion with the original make. The defendant does not use the 
word Yale and never did use it, and if he states that he makes locks according to 



54 HISTORY OF THE TRADE-MARK "YALE" 

the Yale system, this does not constitute a usurpation of the Yale trade-mark, but 
only a statement of the fact that he makes locks similar to those made by the 
plaintiffs in America. This the defendant has a right to do. 

For the rest, the contents of the briefs and all of the documents and written 
matter submitted are made reference to. 

REASONS FOR THE DECISION 

The plaintiffs are an American firm and properly represented according to 
Section 23, paragraph 2, of the trade-mark law. Likewise do the plaintiffs as 
Americans enjoy the protective rights asked by them in Germany on the strength 
of the treaties mentioned by them. 

With reference to I: 

Indisputably the plaintiffs' trade-mark No. 23502 is older than that of the de- 
fendant, No. 136619. 

Indisputably both trade-marks are used for goods of the same kind. 

Indisputably does the defendant's trade-mark deviate in certain respects from 
the plaintiffs'. 

The question is whether, in spite of these deviations, the danger of these two 
trade-marks being confounded with each other exists. 

In judging this question, the two trade-marks must be considered as they 
appear in their application to the goods provided with them where the deviations 
naturally do not appear as prominently or as strikingly as they do on the repro- 
duction presented in sheets 23 and 81 of the Records. 

In judging the danger of confusion, all that is conclusive or decisive is the 
total impression made on the casual observer by the trade-mark. From this point 
of view, it is found that in the first place the same pictorial impression exists in the 
two trade-marks. In both a composition of a picture (clover leaf) and letters is 
found. In both the letter Y is used, probably the one letter in the entire alphabet 
which occurs the least frequently. It is exactly the use of this letter that es- 
sentially determines the total impression of the trade-mark. Even if a letter in 
itself is not susceptible of protection, the composition chosen of a picture with a 
letter is so susceptible, and here it is particularly the picture chosen with the 
rare letter Y which unquestionably involves danger of confusion for the buyer's 
eye in its effect and in its total impression. Even if the defendant has omitted 
the "& T" of the plaintiffs' trade-mark, and even if the defendant has added the 
line with the two so-called tridents. 

It is just because of the use of the letter Y by the defendant that there is no 
doubt left in the Court's mind as to this letter having been purposely chosen by 
the defendant who knew the plaintiffs' trade-mark without a doubt, for the purpose 
of bringing about confusion and even increasing it. As justly stated by the plain- 
tiffs, the letter Y points to the Yale firm, and this connection has brought the court 
to the conviction that the defendant has purposely arranged his trade-mark in 
such a way as to cause confusion. This, however, constitutes a conscious violation 
of the plaintiffs' trade-mark by the defendant. 

Such being the case, however, the plaintiffs' cancellation claim is well founded 
according to the trade-mark law. Furthermore, since conscious violation exists, 
the plaintiffs' claim for damages is also justified according to Section 14 of the trade- 
mark law. The plaintiffs have not yet said anything as to the extent of the damage, 



HISTORY OF THE TRADE-MARK "YALE" 55 

so that their claim in this connection can only be conceived and judged in the sense 
of a motion to establish the fact that the defendant is liable for damages at all. 
The legal requirements existing therefore, judgment had to be rendered accordingly. 
Finally, according to Section 19 of the trade-mark law the plaintiffs' further claim 
covering the removal or destruction of the trade-mark in accordance with their 
motion is also well founded. 

As regards the discontinuance claim, this finds no support in the trade-mark 
law, which only recognizes cancellation; nevertheless, this claim is well founded 
according to Section 1 of the law against unfair competition, which is also applicable 
against a registered trade-mark. Undoubtedly the use of the defendant's trade- 
mark on locks, i.e. on goods similar to the plaintiffs', is apt to create the erroneous 
impression on the part of the buying public that the goods provided with the trade- 
mark emanate from the plaintiffs' factory. This constitutes a usurpation of the 
plaintiffs' industrial activity by misleading the trade, which unfairly promotes the 
defendant's competition, and at the same time unfairly jeopardizes that of the 
plaintiffs, thus being a violation of good morals in the sense of Section 1 of the law 
against unfair competition. The fact that through the registration of his trade- 
mark the defendant enjoys the formal rights bestowed by Section 12 of the trade- 
mark law does not affect the applicability of Section 1 of the law against unfair 
competition. (Cf. Juridical Weekly, 19 12, page 309.) From these points of view, 
the plaintiffs' discontinuance claim is also well founded. 

As regards the vignette, the plaintiffs only claim in connection therewith the 
make-up in the sense of Section 15 of the trade-mark law. Even now the fact can 
be established that the defendant's vignette in its form with the letter Y is sus- 
ceptible of being confounded with the plaintiffs'. In this connection the same argu- 
ments apply which were set forth above in regard to the use of the letter Y. The 
only question is whether the plaintiffs' vignette constitutes a make-up in the sense 
of Section 15 of the trade-mark law. The defendant has disputed this and in this 
respect, therefore, it will depend on the plaintiffs' offered proofs as to whether their 
vignette is considered as a criterion of their goods by the trade circles interested. 

With reference to II. 

It is true the plaintiffs goods are protected neither by a patent or by a utility 
pattern so that the defendant has the right to copy the locks themselves. Neither 
can the defendant's right be contended to advertise his manufactures. If that is all 
the defendant has done, the plaintiffs' corresponding claims would be without 
foundation. 

Now, the plaintiffs have gotten up a catalogue with illustrations of their locks 
and keys. The locks and keys are shown in such a way that they make it clear to 
a mere layman, but certainly to an experienced buyer, just how the locks are made 
in detail, how they operate with the use of the respective keys. This, however, 
makes the plaintiffs the author of illustrations of a technical nature in the sense of 
Section 1, No. 3, of the law concerning authorship rights to works of literature or 
musical compositions, and they are protected under the provisions of this law. 

If with this the circular of the defendant (sheets 24 and 25 of the Records) is 
compared, a complete concordance or agreement with the plaintiffs' illustrations 
becomes apparent at first glance. On the first page there is the plaintiffs' display- 
picture, sheet 33, on pages 2, 3, and 4 of the circular, exact illustrations of locks 
such as the plaintiffs show them in their catalogue, pages 3, 4, 68, and 69, are found. 
That the defendant's object was an imitation is also evident from the fact that 
the defendant makes his illustrations exactly like the plaintiffs', one-half the original 



56 HISTORY OF THE TRADE-MARK "YALE" 

size, which the defendant expresses in the same manner as the plaintiffs, also from 
the sentence taken over from the plaintiffs' printed matter, "Key changes practi- 
cally unlimited." The exact reproduction of the plaintiffs' illustrations in the de- 
fendant's circular can only be explained by assuming that the defendant used the 
plaintiffs' catalogue as a model to copy from when making them; otherwise so 
slavish an adherence would not be possible at all. 

Even if it was not intended to impute to the plaintiffs' catalogue or the illus- 
trations found therein the character of the prints referred to in Section I, Figure 31. c, 
the defendant by the exact imitation as described would have violated Section 1 of 
the law against unfair competition. There is no doubt that the defendant has 
acted for purposes of competition and that he has also acted for the purpose of un- 
fair competition is shown by the fact that in his illustrations, as mentioned above, 
he used trade-marks that might lead to confusion, i.e. knowing full well that 
there is the danger of his trade-mark being mistaken for the plaintiffs'. This 
implies a violation of good morals on the defendant's part in the sense of Section 1 
of the law against unfair competition, and this also furnished all of the plaintiffs' 
claims concerning the circular an undeniable foundation. 

This also applies to the instructions for use. These also agree in all essential 
parts with the plaintiffs' instructions. Here, too, the defendant has used the same 
display picture shown in the plaintiffs' instructions for use. Furthermore, the de- 
fendant has faithfully reproduced several sentences from the plaintiffs' instructions. 
Finally, the defendant has added to the instructions the same technical description 
covering the attachment of the safety lock to a door as arranged by the plaintiffs 
themselves on their instructions. This pictorial representation again shows the 
defendant's trade-mark which is apt to mislead. 

Instructions of this kind are no doubt of an educational nature, and therefore 
afford the author the protection of the copyright law for works of literature and 
musical compositions, and furthermore all that has been said concerning the cata- 
logue, i.e. that the defendant at all events by the slavish imitation of the plain- 
tiffs' instructions violated Section 1 of the law against unfair competition, also applies 
here. Therefore, the plaintiffs' claim in this direction is also well founded. 

Finally, the same points of view as to the law and as to facts enter into con- 
sideration with regard to the "Warning." The two copies submitted show an 
exact agreement. The defendant has faithfully imitated as to the text and the 
pictures the warning added by the plaintiffs as to their safety locks; here, too, he 
has again used the trade-mark violating the plaintiffs'. This shows that the plain- 
tiffs' claim in this respect is also well founded. 

With regard to the claim for damages, the same applies as under I. The 
damage claim made in this connection is also to be conceived as a motion to es- 
tablish the facts and must be so judged. 

The removal and destruction claim finds its support in Section 14 of the law 
concerning the copyright for works of literature and musical compositions. 

With reference to III. 

The plaintiffs base this claim solely on Section 1 of the law against unfair 
competition in connection with Section 826 of the Civil Code. 

The fact that the defendant in his circular has added to the illustrations bor- 
rowed and copied from the plaintiffs the same numbers as have been given to their 
locks by the plaintiffs is not disputed. It may be conceded to the defendant that 
the use of the factory numbers of another firm is customary in his line of business, 
so that the opinion offered by the defendant in this respect is not necessary. 



HISTORY OF THE TRADE-MARK "YALE" 57 

It is decisive here, however, that the defendant has added exactly these num- 
bers to the illustrations taken from the plaintiffs' printed matter which are provided 
with the defendant's trade-mark violating the plaintiffs' trade-mark. These facts 
must be considered jointly and must lead to the conviction that the defendant 
chose the plaintiffs' numbers in this connection in order to create the deception 
mentioned and to bring about the danger of confusion referred to, and thus to 
jeopardize the plaintiffs by unfair competition in a manner violating good morals. 
That this was the defendant's intention and that his whole tendency was to compete 
unfairly with the plaintiffs is shown by the letter sent by the defendant to the firm 
of Schmidt & Meldau. If the defendant had done nothing else than used the 
plaintiffs' factory numbers, there might still be doubts as to the intended unfair 
competition, but the fact that the defendant picked out the plaintiffs' numbers 
even with their additions N, L, P, and PN — so far as N, L is concerned, the de- 
fendant feels able to explain that the letters stand for nickle or lacquer (varnish), 
while for P and PN he has no explanation — admit of no doubt that the defendant 
has acted for the purpose of misleading the consumers and thus violated the Section 
I of the law against unfair competition to the plaintiffs' detriment. This also 
establishes the plaintiffs' discontinuance and damage liability claim in this direction. 

With reference to the damage claim the same remarks apply as for the plain- 
tiffs' request for damages judged under I and II. 

The claim for publication finds its support in Section 23, paragraphs 4 and 5, 
of the law against unfair competition. With reference to the defendant's entire 
attitude it seemed proper also to concede this claim of the plaintiffs. The nature 
of the publicity is shown by the tenor of the judgment. 

IV. This claim is based on the plaintiffs' trade-mark Yale. The defendant 
uses on his letter-heads the inscription "Padlocks, Furniture Locks and Corridor 
Locks after the American Yale System." In this the plaintiffs see a violation of the 
trade-mark registered for them, Yale, while the defendant points out that exactly 
by the addition "System" he calls attention to the difference between his locks 
and those of the Yale Company, thus precluding the possibility of confusion. 

It must be conceded in the defendant's favor that if Yale were a generic term, 
a generally known mark for locks in general, the designation of his locks as made 
after the American Yale System would not constitute a violation of the plaintiffs' 
Yale trade-mark. Yale, however, is not a generic term. Rather is Yale a mark 
or trade-mark whose protection only dates from May, 1907, so that it would be 
quite impossible for it to have come into general use. Furthermore, the letter 
written by the defendant on August 29, 191 1, to the firm of Schmidt & Meldau 
clearly shows that it was only at that time that the defendant wanted to start 
competing with the plaintiffs by means of his locks made after the Yale system. 
That is expressed in so many words by the defendant in his letter. The defendant, 
therefore, up to that time did not himself believe that Yale was a generic term. 
The defendant's letter further shows that he had the intention to deceive the buying 
public by the designation "after the American Yale system." The defendant 
actually, as the court is convinced, had the intention to imitate, therefore himself 
considered the means chosen by him as suitable for imitation. Even if this is not 
decisive with reference to the establishment of the danger of confusion, this cir- 
cumstance yet forms an essential clue for its actual existence. The plaintiffs are an 
American firm. They have had the trade-mark Yale registered for these locks. If 
the defendant announces that he is putting locks made after the American Yale 
system on the market, this constitutes for the still recent trade-mark protection of 



58 HISTORY OF THE TRADE-MARK "YALE" 

the plaintiffs a danger of confusion. At any rate, in ordinary business transactions 
which frequently take place quickly and hastily, there is a strong possibility of the 
goods of the one concern being confounded with those of the other by the designa- 
tion "after the American Yale system," and the plaintiffs, therefore, have the right 
on the strength of Section 12 of the trade-mark law to enjoin the defendant from 
using this designation for his locks. 

That the defendant also used the direct designation Yale locks for his locks 
is something for which the plaintiffs have offered no proofs. Neither is there any 
evidence to show this. The plaintiffs' claim to that extent therefore had to be 
rejected. 

In so far as the statements made allowed of a mature decision, partial judgment 
had to be rendered as mentioned, for the rest decision had to be reserved. 
(Signed) 

Kiltz, 

Bellerstein, 
Dr. Cadenbach. 



This defendant, in addition to infringing the word" Yale" 
and other trade-marks of the Company, also copied the 
marking of the sunken panel on the cylinder head of 
cylinder locks made by us. This phase of the case was 
reserved for a further hearing, and the decision of the 
court on the cylinder head portion of the case follows: 



OPINION 

Announced on In the King's Name: 

April 18, 19 13. In the matter of the firm of the Yale & Towne Manufacturing 
Company of Stamford, Connecticut, United States of America, 
represented, with reference to its legal trade-mark rights, by 
Adolf Steinhauer, a merchant of Hamburg, 

Plaintiff, 
authorized attorney: Counsellor of Justice Dahman, of Elberfeld, 
versus the firm of C. Ed. Schulte, of Velbert, Defendant, 

authorized attorneys: Attorneys Esch and Dr. Maull, of Elber- 
feld, 

on account of trade-mark violation, the fifth civil chamber of the 
Royal Provincial Court of Elberfeld, in consequence of the hear- 
ing of April 4, 19 13, and with the co-operation of Provincial 
Court Director Kiltz, Provincial Judge Dr. Bellerstein and Court 
Assessor Dr. Preyer, has rendered the following verdict: 
The defendant is condemned: 
1) to discontinue the use of the vignette employed by him, parallel at the top and 
at the bottom and semicircular at both sides, provided with the letter Y, for 
the purpose of designating safety locks and padlocks of all kinds, under a penalty 
of up to 1500 marks for each offence, 



HISTORY OF THE TRADE-MARK "YALE" 59 

2) the fact is established that the defendant is obliged to indemnify the plaintiff 
for the damage which the same has suffered through the use of the vignette designat- 
ed under No. 1. 

3) It is decreed that on safety locks and padlocks of all kinds made by the defen- 
dant as well as on business announcements made by him the vignette mentioned 
under 1 be removed by an official of the court and that, so far as such removal 
is not feasible, the articles bearing this vignette be destroyed. 

The defendant is condemned to bear the expense of the lawsuit. 

This judgment is declared susceptible of temporary execution against a deposit 
of 1000 marks. 



STATEMENT OF FACTS 

In the partial judgment of this court dated June 28, 19 12, to which reference 
is hereby made, the entire condition of affairs and the litigants' relationship are 
laid bare, particularly also so far as the still unfinished part of the plaintiffs' claim 
concerning the vignette is involved. 

The parties to the suit have in so far repeated their previous statements and ex- 
planations as well as their motions and made the result of the proofs rendered 
which, according to the decision as to proofs simultaneously announced with the 
partial judgment, had reference to the question of make-up, the object of the pro- 
ceedings. 

In accordance with their documents of January 27 and March 26, 19 13, the 
plaintiffs have offered any additional proofs necessary for the question of make-up. 
The defendant submitted the contents of his document of February 19, 19 13, to 
which reference is hereby made, and presented a cardboard box with a vignette 
containing the letters H. & T. V. 



REASONS FOR THE DECISION 

In the partial judgment announced on June 28, 1912, the fact was already es- 
tablished in the reasons concerning the vignette in question that the defendant's 
vignette with the letter Y is susceptible of being confounded owing to its form with 
that of the plaintiffs', and that exactly the same thing applies here which is set forth 
in the balance of the reasons for the decision concerning the use of the letter Y. 
Since the court hereby expressly maintains this previous standpoint, the reasons 
for the decision in the previous partial judgment are made reference to so far as 
necessary. 

According to the result of the proofs taken, the court has reached the convic- 
tion that the vignette used by the plaintiffs with the inscription is indeed con- 
sidered as a criterion of the plaintiffs' safety locks and padlocks in interested trade 
circles. "Interested trade circles" know at once when they sell locks with the 
vignette in question that they are made by the plaintiffs. This has been shown by 
the proofs rendered, and this, therefore, constitutes the characteristic features of the 
make-up in the sense of Section 15 of the trade-mark law. It is no longer necessary 
to take further proofs in this direction; all that is invovled — as shown by the plain- 
tiffs' motion — is its vignette with the inscription Yale, and the defendant's vignette 



60 HISTORY OF THE TRADE-MARK "YALE" 

with the letter Y is susceptible of being confounded with it. It is only this vignette 
with the letter Y that the plaintiffs' motion is directed against; the further proofs 
offered by the defendant therefore are of no consequence. 

The defendant's objection that the United States know of no protection of make- 
up corresponding with Section 15, or that the plaintiffs have no make-up protection 
in the United States concerning the vignette is irrelevant; on the strength of the 
international Union Treaty, to which Germany and the United States belong, the 
plaintiffs are entitled to claim protection for the trade-marks in Germany (Im- 
perial Law Paper, 1903, page 167, article 2), i.e. protection on the basis of the 
German trade-mark law (Section 23, where it says "this" law). It is, therefore, a 
matter of indifference whether the United States know the make-up at all or whether 
the plaintiffs enjoy make-up protection in the United States with reference to the 
vignette ; for it is not the protection granted by the United States, but that allowed 
by Germany which is decisive, since — and that is the only point at issue — German 
trade-marks get the same protection in the United States as American trade-marks. 

That the defendant used the vignette with the letter Y for the purpose of 
practising deception in commerce and trade is shown by the previous judgment, 
reference to which has already been made. 

Since Section 19 of the trade-mark law also has reference to Section 15 of the 
law, the principal motion made in this connection and the incidental motions are 
well founded. 

Costs according to Section 91, Civil Code Regulations. Through the plain- 
tiffs' claim which was rejected (IV of the partial judgment) special costs have not 
been entailed. 

Susceptible of temporary execution, according to Section 710 of the Civil 
Code Regulations. 

(Signed) 

Kiltz, 

Bellerstein, 

Preyer. 



HISTORY OF THE TRADE-MARK "YALE" 61 



Ernst Boessneck, Chemnitz, Germany 

This is to certify that the foregoing document, dated March 6, 1913, with the 
certified copy belonging thereto has been executed on page 2 and 4b in accordance 
with the laws of this country at the Royal Saxon High Court of Chemnitz by the 
Secretary Lehmann authorized thereto. 

Chemnitz, this 29th day of April, 1913. 
The President of the Royal High Court. 
[L. S.] (Signed) 

G6LITZ. 

Official Copy. 

Public session of the first Chamber for commercial matters of the Royal High 
Court. 

In the presence of 

1. Dr. Nestler, Counsellor of the Court, as president. 

2. Baldauf, Commercial Judge. 

3. Tetzner, Commercial Judge, as assistant Judges. 
Referendary Schultz, as Clerk of the court. 

Chemnitz, March 6, 1913. 
In the Civil Proceedings of 

The Yale & Towne Manufacturing Company, New York, 

Plaintiffs 
represented in the proceedings by Counsellor of Justice Beutler, Dr. Funke and Dr. 
Hiibner, of Chemnitz, attorneys at law, 

vs. 
Ernst Boessneck, of Chemnitz, Manufacturer, 

Defendant, 
represented in the proceedings by Counsellor of Justice Dr. Guhne and Dr. Hent- 
schel, of Chemnitz, attorneys at law, for unfair competition, there appeared at the 
call of the matter at the hearing appointed for the publication of a decision 

1. for the plaintiffs Dr. Funke, attorney at law, 

2. for the defendant Dr. Hentschel, attorney at law. 

The parties request that the proceedings be taken up for the purpose of en- 
tering into a compromise. 

The parties then hand to the court a written compromise, which was read and 
approved. 

Read, Approved 

Dr. Nestler. Schultz. 



COMPROMISE 

The defendant undertakes to remove from his catalogues the numbers men- 
tioned in the pleadings of November 29, 1912, claim 2) — pages 65-67 of the court 
files and not to offer for sale and sell his products under these numbers. He also 
undertakes not to use the word "Yale" in his catalogues and other advertisements 
and at the offering for sale and selling of his products. 



62 HISTORY OF THE TRADE-MARK "YALE" 

The plaintiff waives all further claims brought forward against the defendant, 
and more particularly all claims for damages. 

The judicial costs are borne by the plaintiff. The extra judicial costs are 
borne by each party. 

The plaintiffs reserve to themselves the right to revoke this compromise until 
the 1 6th inst by special pleadings. 

Issued as office copy, 

Chemnitz, April 2, 19 13. 

The Clerk of the Royal High Court. 
[L. S.] (Signed) 

Lehmann, Secretary. 

Certified copy 

of the claim 2 of the pleading of November 29, 1912, referred to at the head of the 
compromise. 

2) To forbid the defendant under a penalty of 1500 marks for each case of con- 
travention, payable to the court, to offer for sale and sell the locks and keys sold by 
him, namely: 

open rim locks under the numbers 2, 4, 10, 12, 

rim locks with bolts with open locks and box staple with the Nos. 701, 702, 711, 712, 
oblong rim locks with a falling latch with the Nos. 441, 442, 741, 742, 
rim locks with trap and bolt with the Nos. 750, 762, 780, 792, 755, 756, 
mortise locks with a falling latch with the Nos. 64N, 66N, 74N, 64, 66, 74, 464, 466, 

474, 

mortise heavy locks with a falling latch with the Nos. 262 >£, 274K, 

mortise bolt locks with the Nos. 342N, 344N, 342, 344, 

mortise house door locks with the Nos. 602, 614, 642, 654, 

mortise bolt locks, in which the key can be put in from both sides with the Nos. 

302, 304, 

mortise front door locks with the Nos. 222 >£, 234K, 

mortise locks with a falling latch with the Nos. 414L, 414P, 416, 418P, 428, 

standard rim locks with a falling latch with the No. 4000, 

rim locks with bolts with the Nos. 4300, 4620, 4630, 

mortise narrow locks with a falling latch with the Nos. 1000, 1004, 1008, 

mortise locks with bolts with the Nos. 1049, 1040, 1308, 1300, 

mortise room locks with the Nos. 1400, 1640, 1620, 1500, 

mortise house door locks with the Nos. 1684, 1614, 

mortise hall locks with the No. 2200 >£, 

mortise locks with trap and bolt with the No. 2000 }4, 

standard latch locks with trap and bolt with the Nos. 2614L, 2614 P, 2616, 416, 

2618, 418, 2628, 428, 

mortise bolt locks with flat keys with the No. 1254, 

wardrobe locks with the Nos. 500, 501, 510, 511, 510S, 51 iS, 

hunting locks with the Nos. 520, 521, 9220, 9221, 

box and desk locks with the Nos. 540, 541, 5240, 5241, 

drawer and cabinet locks with the Nos. 560, 561, 562S, 563S, 570, 571, 594, 595, 

5260, 5261, 

cabinet locks with flat keys with the Nos. 950, 951, 960, 961, 970, 971, 980, 981, 

990, 99i, 



HISTORY OF THE TRADE-MARK "YALE" 63 

padlocks of bronze with the Nos. 8013B, 8213B, 8213F, 8013F, 813, 823, 833, 843, 
853, 863, 873, 893, 814, 824, 835, 844, 854, 864, 874, 894, 8454, 
letter boxes and charity boxes with the Nos. 2 and 3. 

Authenticated, Chemnitz, April 12, 1913. 
The Clerk of the Royal High Court Chemnitz. 
[L. S.] (Signed) 

Lehmann, Secretary. 



Smith-Haines, New York, N. Y. 

UNITED STATES DISTRICT COURT, 
SOUTHERN DISTRICT OF NEW YORK. 



The Yale & Towne Manufacturing 
Company, 



against 

Frederick Ray, F. Arthur Haines, and 

Daniel R. Smith, 

Defendants. 



Final Decree. 



The bill of complaint having been duly filed in the above entitled case on the 
21st day of March, 1913; and the subpoena ad respondendum having been issued on 
March 21, 1913, and returned on or about the 22d day of March, 1913; and it 
appearing therefrom that the said subpoena was duly served upon the defendant 
Daniel R. Smith on the 21st day of March, 1913, and upon the defendants F. 
Arthur Haines and Frederick Ray on the 22nd day of March, 19 13; and it appearing 
that the said defendants Frederick Ray, F. Arthur Haines, and Daniel R. Smith 
and each of them, have wholly failed to appear, plead or answer to the said bill of 
complaint, and are in default therefor; and it further appearing that on the 12th day 
of April, 19 13, the plaintiff herein duly entered an order that the bill herein be taken 
pro confesso against the defendants Frederick Ray, F. Arthur Haines, and Daniel 
R. Smith, for want of a pleading, and that more than thirty days have elapsed 
since the entry of said rule, and that no further proceedings have been had in the 
said case, or taken since said rule and order was entered ; and it further appearing 
that the plaintiff has expressly waived an accounting herein ; 

NOW, therefore, upon motion of Louis H. Porter, Esq., solicitor for the plain- 
tiff, it is hereby 

ORDERED, ADJUDGED AND DECREED 

First. That the plaintiff is entitled to the exclusive use of the word or name 
"YALE" as a trade-mark and trade-name in connection with locks of all kinds, 
including therein all kinds and styles of locks, and among others timelocks, bank 
locks, combination locks, safe locks, padlocks, night latches, deadlocks, cabinet 



64 HISTORY OF THE TRADE-MARK "YALE" 

locks, cylinder locks, lever-tumbler locks, warded locks, buckle locks, prison locks, 
asylum locks, and all other varieties and kinds and descriptions of locks. 

Second. That the defendants Frederick Ray, F. Arthur Haines, and Daniel 
R. Smith, have violated the plaintiff's exclusive rights in and to the said word 
"YALE," by advertising for sale and selling a certain lock buckle not by or for the 
plaintiff made, but made by another manufacturer; to wit, — the Lynch Manufactur- 
ing Company, and containing in conjunction with said buckle a cylinder lock, which 
said defendants advertised for sale under the name of the "Yale Lock Principle 
Buckle." 

Third. That the plaintiff have judgment against the defendants for the costs 
of this action, together with the disbursements to be taxed by the Clerk, and as 
taxed amounting to forty-two 80-100 ($42.80) dollars, and that the plaintiff have 
execution therefor. 

Fourth. That an injunction issue herein, perpetually enjoining the said 
Frederick Ray, F. Arthur Haines, and Daniel R. Smith, and each of their attorneys, 
agents, servants, workmen, and officers, and all claiming or holding through or 
under them, or in privity with them, from in any form or manner whatsoever 
making use in connection with any lock or portion thereof, not made by or for the 
plaintiff, of the word "YALE," or any other word or mark imitating or simulating 
the plaintiff's said trade-mark "YALE," or in anywise calculated to be mistaken 
therefor or confused therewith, and from selling or from offering for sale, or other- 
wise disposing of any lock, or part thereof, to which shall be applied in any form or 
manner whatsoever the word "YALE," or any other imitation or simulation of the 
plaintiff's said trade-mark "YALE," or any word or mark calculated to be mistaken 
therefor or confused therewith, except in connection with locks made by or for the 
plaintiff, and from making use in connection with the sale or offering for sale of any 
lock, or part thereof, not by or for the plaintiff made of the word "YALE" in any 
connection or manner whatsoever; and from doing any other act or thing in any 
degree calculated to enable, promote or encourage the sale or substitution of any 
lock not by or for the plaintiff made, as and for the lock of the plaintiff. 
Dated, New York, May 15, 1913. 

Geo. C. Holt, 
U. S. D. J. 



INJUNCTION 

DISTRICT COURT OF THE UNITED STATES 
SOUTHERN DISTRICT OF NEW YORK 

THE PRESIDENT OF THE UNITED STATES OF AMERICA, 
To FREDERICK RAY, F. ARTHUR HAINES and DANIEL R. SMITH, and 
to your attorneys, agents, servants, workmen, and officers, and to each and every 
of you, GREETING: 

WHEREAS, It hath been represented to the Judge of our District Court of 
the United States for the Southern District of New York, in Chancery sitting, on 
the part of the Yale & Towne Manufacturing Company, plaintiff, in its certain bill 
of complaint, exhibited in our said District Court, on the Chancery side thereof, 



HISTORY OF THE TRADE-MARK "YALE" 65 

before the Judges of said Court, against you, the said Frederick Ray, F. Arthur 
Haines, and Daniel R. Smith, to be relieved touching the matters complained of. 
In which said bill it is stated, among other things, that you are combining and con- 
federating with others to injure the plaintiff touching the matters set forth in said 
bill, and that your actings and doing in the premises are contrary to equity and good 
conscience. And it being ordered that a Writ of Perpetual Injunction issue out of 
said Court, upon said bill, enjoining and restraining you, and each of you, as prayed 
for in said bill; 

We, therefore, in consideration thereof, and of the particular matters in said 
bill set forth, do strictly command you, the said FREDERICK RAY, F. ARTHUR 
HAINES, and DANIEL R. SMITH, your attorneys, agents, servants, workmen, 
and officers, and each and every of you, and all claiming or holding through or under 
you, or in privity with you, that you desist from in any form or manner whatsoever 
making use in connection with any lock or portion thereof, not made by or for the 
plaintifT, of the word "YALE," or any other word or mark imitating or simulating 
the plaintiff's said trade-mark "YALE," or in anywise calculated to be mistaken 
therefor or confused therewith, and from selling or from offering for sale, or other- 
wise disposing of any lock, or part thereof, to which shall be applied in any form 
or manner whatsoever the word "YALE," or any other imitation or simulation of 
the plaintiff's said trade -mark "YALE," or any word or mark calculated to be mis- 
taken therefor or confused therewith, except in connection with locks made by or 
for the plaintiff, and from making use in connection with the sale or offering for 
sale of any lock, or part thereof, not by or for the plaintiff made of the word "YALE" 
in any connection or manner whatsoever; and from doing any other act or thing in 
any degree calculated to enable, promote or encourage the sale or substitution of 
any lock not by or for the plaintiff made, as and for the lock of the plaintiff; until 
this Honorable Court, in Chancery sitting, shall make other order to the contrary. 
Hereof fail not, under the penalty of what the law directs. 

WITNESS, the Hon. George C. Holt, 

Judge. 
of the United States District Court, at New York, in said District, this 15th day of 
May, in the year of our Lord one thousand nine hundred and thirteen, and of 
our Independence the one hundred and thirty-seventh. 
[Seal] Alex. Gilchrist, Jr., 

Clerk. 



HISTORY OF THE TRADE-MARK "YALE" 

General Automobile Supply Company, Inc., New York, N. Y. 

UNITED STATES DISTRICT COURT, 
SOUTHERN DISTRICT OF NEW YORK 



The Yale & Towne Manufacturing Company, 

Plaintiff, 



General Automobile Supply Company, Inc., 
Defendant. 



Final Decree. 
► E. 10-141. 



The bill of complaint having been duly filed in the above entitled case on the 
21st day of March, 1913; and the subpoena ad respondendum having been issued on 
the 2 1st day of March, 19 13, and returned on or about the 22nd day of March, 
1913; and it appearing therefrom that the said subpoena was duly served upon 
William B. Hughes, Secretary to the defendant, General Automobile Supply Com- 
pany, Inc., on the 21st day of March, 1913; and it appearing that the said defendant 
duly appeared by its attorneys, Messrs. Murphy & Fultz, and that the said de- 
fendant has wholly failed to plead or answer to the said bill of complaint, and is in 
default therefore; and it further appearing that on the 24th day of September, 
19 13, the plaintiff herein duly entered an order that the bill herein be taken pro 
confesso against the defendant, General Automobile Supply Company, Inc. for 
want of pleading, and that more than thirty days have elapsed since the entry 
of said rule, and that no further proceedings have been had in the said case, or 
taken since said rule and order was entered; and it further appearing that the 
plaintiff has expressly waived an accounting herein; 

NOW, therefore, upon motion of Louis H. Porter, Esq., solicitor for the plain- 
tiff, it is hereby 

ORDERED, ADJUDGED AND DECREED, 

First. That the plaintiff is entitled to the exclusive use of the word or name 
"Yale" as a trade mark and trade-name in connection with locks of all kinds, 
including therein all kinds and styles of locks, and among others timelocks, bank 
locks, combination locks, safe locks, padlocks, night latches, deadlocks, cabinet 
locks, cylinder locks, lever-tumbler locks, warded locks, buckle locks, prison locks, 
asylum locks, and all other varieties and kinds and descriptions of locks. 

Second. That the defendant, General Automobile Supply Company, Inc., has 
violated the plaintiff's exclusive rights in and to the said word "Yale," by ad- 
vertising for sale and selling a certain lock buckle not by or for the plaintiff made, 
but made by another manufacturer, to wit — the Lynch Manufacturing Company, 
and containing in conjunction with said buckle a cylinder lock, which said defendant 
advertised for sale under the name of the "Lynch Yale Lock Buckle." 

Third. That the plaintiff have judgment against the defendant for the costs 
of this action, together with the disbursements to be taxed by the clerk, and as 



HISTORY OF THE TRADE-MARK "YALE" 67 

taxed amounting to Thirty-eight 80-100 (38.80) Dollars, and that the plaintiff 
have execution therefor. 

Fourth. That an injunction be issued herein, perpetually enjoining the said 
General Automobile Supply Company, Inc., and each of its attorneys, agents, ser- 
vants, workmen, and officers, and all claiming or holding through or under them 
or in privity with them from in any form or manner whatsoever making use in con- 
nection with any lock or portion thereof, or any article of builders' hardware, not 
made by or for the plaintiff, of the word "YALE," or any other word or mark 
imitating or simulating the plaintiff's said trade-mark "YALE," or in any wise 
calculated to be mistaken therefor, or confused therewith, and from selling or from 
offering for sale, or otherwise disposing of any lock or article of builders' hardware, 
or part thereof, to which shall be applied in any form or manner whatsoever the 
word "YALE," or any other imitation or simulation of the plaintiff's said trade- 
mark "YALE," or any word or mark calculated to be mistaken therefor, or con- 
fused therewith, except in connection with locks and articles of builders' hardware 
made by or for the plaintiff, and from making use in connection with the sale or 
offering for sale of any lock or article of hardware not by or for the plaintiff made of 
the word "YALE" in any connection or manner whatsoever; and from doing any 
other act or thing in any degree calculated to enable, promote, or encourage the 
sale or substitution of any lock or article of hardware not by or for the plaintiff 
made as and for the lock or article of hardware of the plaintiff. 
Dated, New York, October 29, 19 13. 

Leonard Hand, 

U. S. D. J. 



Motor Car Supply Co., Chicago, III. 

IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

Tuesday, October 28, 1913. Present: Hon. Kenesaw M. Landis, Judge. 



Yale & Towne Manufacturing Company, 
A Corporation, 

Plaintiff, 
vs. 
Motor Car Supply Company, 
A Corporation, 

Defendant. 



In Equity, No. 74. 



This cause coming on to be heard at this term and it appearing to the Court 
that on the 26th day of September, 19 13, more than thirty days prior to the entry 
of this decree, an order was entered herein whereby the bill of complaint was taken 
pro conjesso and that the said order has never been set aside, it is thereupon ordered 
adjudged and decreed that such decree taking the bill of complaint pro conjesso 



68 HISTORY OF THE TRADE-MARK "YALE" 

shall be deemed absolute; that this Court has jurisdiction of the subject matter of 
this cause and of the parties hereto ; that the allegations of the bill of complaint are 
true; that the equities of the case are with the plaintiff and that the plaintiff is 
entitled to the relief prayed, and that the defendant, Motor Car Supply Company, 
its agents, officers, attorneys, servants, employes, and assigns be and the same 
hereby, each and all, perpetually are enjoined and restrained from in any form or 
manner whatsoever using or employing upon or in connection with any lock or 
key, or any portion thereof, not made or marketed by the plaintiff, the word 
"Yale" or any other word or mark like the said word "Yale" and from using or 
employing in connection with the advertisement, announcement or sale of locks 
or keys not made or marketed by the plaintiff the word "Yale," or any like word, 
and from using or employing upon or in connection with the advertisement, an- 
nouncement or sale of any lock or key not made or marketed by the plaintiff any 
word or words, mark or marks, device or devices calculated to enable the product of 
any other manufacturer to be sold as and for the product of the plaintiff, and that a 
writ of perpetual injunction issue accordingly. 

It is further ordered, adjudged and decreed that the plaintiff is entitled to an 
accounting of and from the said defendant of the profits realized by it by reason of 
its wrongful acts in the premises, and to recover of and from the said defendant the 
said profits, together with such damages as the plaintiff has suffered by reasons of 
the defendant's said infringement and is entitled to a reference to a Master in 
Chancery to take, state, and report the said accounting. The plaintiff in open 
court, having elected to waive the said accounting of profits and damages, the 
Court finds the sum of One Dollar in lieu thereof, and it is further ordered, adjudged 
and decreed that the said plaintiff recover of and from the said defendant the said 
sum of One Dollar, together with the costs of this suit to be taxed and have execu- 
tion therefor. 

(Sgd.) Kenesaw M. Landis. 



A. ] . \3 G. W. Anderson, Galesburg, III. 

IN THE UNITED STATES DISTRICT COURT, 
FOR THE SOUTHERN DISTRICT OF ILLINOIS, 

NORTHERN DIVISION 



The Yale & Towne Manufacturing Company, 

Plaintiff, 

vs. 

A. J. Anderson and G. W. Anderson, 

Willis Manufacturing Company, 

and Fred Liebrich, 

Defendants. 



In Equity. 



This cause having been noticed for hearing upon various motions of the plain- 
tiff this day filed, and upon the motion of defendants to dismiss the bill of complaint, 
all of which motions have been duly noticed, it is ordered that the said motion of the 



HISTORY OF THE TRADE-MARK "YALE" 69 

defendants to dismiss the said bill of complaint be and the same is hereby over- 
ruled, and the defendant Andrew J. Anderson, named in the bill of complaint as 
A. J. Anderson, said defendant A. J. Anderson stating and claiming in open court 
to represent and appear for each and all other defendants herein, consenting on 
behalf of himself and each and all of the other defendants herein to this order and 
decree, and the cause coming on for final hearing upon the bill of complaint, answer 
of defendants and answers of A. J. Anderson and G. W. Anderson to interrogatories 
heretofore filed and propounded, the Court finds that it has jurisdiction both of the 
subject matter of the suit and of the parties thereto, and thereupon it is by con- 
sent of all parties to said suit ordered, adjudged, and decreed that the said de- 
fendants, A. J. Anderson, G. W. Anderson, Willis Manufacturing Company, and 
Fred Liebrich and each of them, their respective agents, officers, attorneys, servants, 
employes, and assigns, and each thereof be and they are hereby perpetually en- 
joined and restrained from in any form or manner whatsoever using or employing 
upon or in connection with any lock, key, safe, or wall safe, or any portion thereof, 
the word "Yale" or the word "Gale," or any other word or mark like the word 
"Yale" or like the said word "Gale," and from using or employing in connection 
with or in the advertisement, announcement or sale of locks, keys, safes, or wall 
safes, or any thereof, the word "Yale" or the word "Gale," or any like word, and 
from using or employing upon or in connection with the advertisement, announce- 
ment or sale of any lock, key, safe, or wall safe, any word or words, mark or marks, 
device or devices, calculated to enable the product of defendants or either of them 
to be sold as the product of the plaintiff, provided that this decree shall not apply 
to any product made or marketed by the plaintiff, and bearing or exhibiting the 
word "Yale" under authority of the plaintiff or prevent the sale of such product, 
and that a writ of injunction issue to the above effect. 

And the plaintiff having waived an accounting of profits and an assessment of 
damages from, by or against the said defendants and each of them, it is ordered 
that plaintiff do have and recover from said defendants the sum of One Dollar 
nominal damages in full of all profits and damages in the premises, and do have 
execution therefor; and further, that plaintiff do have and recover from defendants 
its costs in this suit to be taxed, and have execution therefor, and it is further 
ordered that the above decree for profits and damages and costs be and the same 
is hereby satisfied. 
October I, 19 13. 

Humphrey, 

Judge. 
We consent to the above decree. 

The Yale & Towne Manufacturing Company, 

by Frank F. Reed, its solicitor. — Plaintiff. 
A. J. Anderson, G. W. Anderson, by A. J. Anderson, his agent, Willis Manufactur- 
ing Company, by A. J. Anderson, its agent, Fred Liebrich, by A. J. Anderson, 
his agent. — Defendants. 



70 HISTORY OF THE TRADE-MARK "YALE" 

E. T. Fraim Lock Co., Lancaster, Pa. 

OPINION 

UNITED STATES 

CIRCUIT COURT OF APPEALS 

Second Circuit 



The Yale & Towne Manufacturing Co. 

Complainant — A ppellant, 
vs. 
Benjamin S. Alder, 

Defendant — A ppellee. 



Before 

Wallace, 
Lacombe and 
Townsend, 
Circuit Judges. 



Appeal from decree dismissing complaint in suit for unfair competition, consist- 
ing of the imitation of a padlock manufactured by complainant and of its catalogue 
number. Decree reversed at the close of the argument. — Wallace, J. {Orally) : — 

We are prepared to dispose of this appeal now. In cases like this, where 
unfair competition in trade is charged, based upon the manufacture and sale by the 
defendant of an article in simulation of one previously put upon the market by the 
plaintiff, when specimens of the articles are before the court and there is no ques- 
tion of their authenticity, the court can judge of the resemblance between them, 
and whether purchasers are likely to be deceived by the resemblance, and the 
testimony of experts or of dealers is of little assistance. A comparison of the ex- 
hibits satisfies us beyond any doubt that the defendant has so closely copied the 
plaintiff's padlock in form, size, coloring, lettering, and details of finish that his 
articles are likely to induce purchasers to buy his padlocks supposing them to be 
the padlocks of the plaintiff. Retail dealers and the trade generally will no doubt 
recognize differences, and are in no danger of being misled by any resemblance of 
identity between the articles; but the question is whether their customers, the or- 
dinary purchasers who buy from the retail dealer are likely to be deceived; and 
that they are we are thoroughly convinced. 

Many of the features of the plaintiff's padlock were separately a fair subject of 
appropriation by rival manufacturers, because they were not original with the 
plaintiff; but the plaintiff was the first to assemble them together in the concrete 
form in which its padlock has become known to the public as its product; and while 
we cannot say that the appropriation by the defendant of this particular feature 
or that particular feature would have been unfair, we can say that when all of the 
prominent ones have been appropriated and so assembled together with slight 
variations in some of them that altogether they produce the same general effect, 
and the ordinary purchaser would not be apt to discover the difference, enough 
appears to establish unfair competition. The defendant has with a purpose taken 
the design and dress of the plaintiff's padlock. He has carefully copied it, differen- 
tiating his own from it in minor details, probably intending to escape the charge 
of infringement; but he has gone a step too far when he has produced a padlock 



HISTORY OF THE TRADE-MARK "YALE" 71 

which to casual observation is substantially identical in appearance with the plain- 
tiff's. His apparent purpose was to extend his trade with retail dealers and supplant 
the plaintiff 's sales to such dealers by furnishing them with an article which could 
be sold readily to customers as the article made by the plaintiff. When the de- 
fendant sold his locks to the retail dealers at a considerably less price per dozen 
than that which they were obliged to pay for the plaintiff's he placed a strong 
temptation before these dealers to buy his locks and increase their profits by selling 
them to customers wanting to purchase the plaintiff's higher priced locks; and we are 
constrained to believe it was intentionally and deliberately done in order to increase 
his trade at the expense of the plaintiff's. 

The evidence in the record shows a laxity of business morality among lock 
manufacturers in appropriating the form, dress, and general appearance of each 
other's products which is not commendable, and which it is to be hoped does not 
exist in other trades; but this evidence and the argument based upon it cannot in- 
fluence the court in a case where infringement is clear and the public are likely to be 
deceived, and they as well as the plaintiff are entitled to protection. 

In accordance with this opinion, the following Final 
Decree has been entered in the U. S. Circuit Court, upon 
the mandate of the Circuit Court of Appeals, definitely 
determining our right to protection in the exclusive use of 
this style of padlock. 

DECREE 

IT IS HEREBY ORDERED, ADJUDGED AND DECREED, That the 
decree of said Circuit Court be and it hereby is reversed with costs in this court, 
taxed at the sum of $254.84 and in the Circuit Court, and that a decree issue en- 
joining the defendant, his agents, attorneys, employees, servants, and workmen 
and each and every of them, from selling, offering or exposing or advertising for 
sale, and from causing to be sold, offered, exposed or advertised for sale, the par- 
ticular padlock complained of in the bill of complaint herein and of which "com- 
plainant's exhibit defendant's padlock" is a specimen or any padlock so similar to 
the padlock of which "complainant's exhibit complainant's padlock" is a specimen 
as to be likely to deceive prospective purchasers as to the origin or manufacture of 
the same, and from applying to said padlocks in advertisements, or in any other 
manner, the catalogue number 815 or any colorable imitation of complainant's 
catalogue number 805. 



72 HISTORY OF THE TRADE-MARK "YALE' 



Eagle Lock Co., Terry ville, Conn. 



DECISION 



SUPREME COURT 
New York County 



The Yale & Towne Manufacturing Co., 
Plaintiff, 
against 
Eagle Lock Company, 

Defendant. 



Decision. 



This case having come on to be tried before me at Special Term, Part IV, of 
this Court, on the 18th day of October, 1909; and the plaintiff having appeared by 
Messrs. John G. Milburn and Louis H. Porter, its counsel; and the defendant having 
appeared by Messrs. Antonio Knauth and James L. Suydam, its counsel; and the 
parties having submitted their proofs; and the trial having continued on the 19th, 
20th, 21st, 22d, 25th, 26th, 27th, 28th, and 29th days of October, 1909, and on the 
1st, 3d, 4th, and 5th days of November, 1909; and due deliberation having been 
had: 

I now make and file my decision in writing, as follows: 

First. The plaintiff is a corporation organized under the laws of the State of 
Connecticut, and engaged in the manufacture and sale within the State of New 
York, and throughout the United States, and elsewhere, of locks of various kinds, 
and in particular of cylinder rim night latches, and has acquired and enjoys a wide 
reputation and extensive market for the sale of said night latches. 

Second. During the period from 1870 to 1884, the manufacture of said 
cylinder rim night latches was conducted by the plaintiff under United States 
Letters Patent, and no one else manufactured or sold night latches of similar 
construction. 

Third. Beginning with the year 1885, other lock manufacturers throughout 
the United States commenced to manufacture, and have since continued to manu- 
facture and sell cylinder rim night latches, which in shape, size, and general appear- 
ance, and dressing, closely resembled the night latches as manufactured and sold 
by the plaintiff. During said period the plaintiff sought to differentiate and dis- 
tinguish its night latches from those of other manufacturers by modifying the 
dressing and appearance of its goods in various ways, and among others, by using 
an ogee collar or ring in place of the straight bevelled ring, and round knob on the 
case having milled edges. But said ogee collar or ring, and said round knob on the 
case having milled edges, have since been used generally by other manufacturers of 
night latches, and have ceased to distinguish plaintiff's night latches. 

Fourth. Prior to the year 1892, the cylinder heads of all rim night latches as 
made by any manufacturer, were plain and smooth, and without marking or 



HISTORY OF THE TRADE-MARK "YALE" 73 

inscription. In the year 1892, the plaintiff, desiring to still further differentiate 
and distinguish its goods from those of other manufacturers, commenced to mark 
in small incised letters the word "YALE" on the cylinder head of its night latches. 

Fifth. Other manufacturers shortly thereafter marked the cylinder heads of 
their night latches with various names and trade-marks, inscribed in incised letters, 
with or without any incised lines in connection therewith. 

Sixth. In the year 1902 the plaintiff, desiring to still further distinguish its 
goods from those of its competitors, marked its cylinder heads with a sunken panel 
having straight parallel side, and curved ends, with a stippled background, con- 
taining the word "YALE" in raised letters therein, and ever since the year 1902 it 
has continuously marked its cylinder heads of night latches in that way. 

Seventh. The marking of the cylinder heads of the plaintiff's night latches with 
the above described panel containing the word "YALE" was strikingly different 
from the marking on any other cylinder heads as theretofore manufactured, and by 
its extensive use the said marking has become generally associated in the trade, and 
with customers and users of the plaintiff's night latches, as distinctive of the night 
latches manufactured by the plaintiff, and the said marking on the said cylinder 
heads has come to be generally recognized as distinguishing the night latches manu- 
factured by the plaintiff from those of other manufacturers. 

Eighth. The plaintiff has caused the outline of a panel, having the same out- 
lines as the panel as used on its cylinder head, to be registered as a trade-mark in the 
United States Patent Office at Washington. Other manufacturers have used an 
outline of a panel of substantially similar shape in connection with articles of hard- 
ware, prior to its use by the plaintiff, and the plaintiff has not established a valid 
trade-mark in said outline. 

Ninth. In the year 1905, the defendant commenced to manufacture and sell 
night latches of the same general shape, size, and appearance as those manufactured 
by the plaintiff, and having the cylinder head marked with a sunken panel having 
straight parallel sides and curved ends, and a stippled background, the said panel 
being of substantially identical appearance with the panel on the plaintiff's cylinder 
heads, but containing therein raised letters the word "EAGLE." The night 
latches manufactured by the defendant were of equally good quality as the night 
latches manufactured by the plaintiff. 

Tenth. That the plaintiff thereupon remonstrated with the defendant against 
such marking on the cylinder heads of the defendant's night latches, and the de- 
fendant thereupon modified the appearance of the panel as placed on its cylinder 
heads, but continued to make night latches of the same general appearance as 
plaintiff's night latches, and having the cylinder heads marked with a sunken 
panel, the sides of which were slightly curved, and the ends straight, but retaining 
the sunken, stippled background, with the word "EAGLE" therein; and the de- 
fendant has continued to manufacture and sell, and is now manufacturing and 
selling night latches containing the said modified form of panel on its cylinder 
heads. 

Eleventh. That the night latches as manufactured by the defendant, both in 
the original form of panel and in the modified, curved form, so closely resembled 
the night latches manufactured by the plaintiff as to be likely to mislead cus- 
tomers desiring to purchase the plaintiff's night latches; and the manufacture and 
sale of said night latches, having cylinder heads marked with a sunken panel con- 
taining the word "EAGLE" in either of the forms as heretofore made by the de- 
fendant, constitutes unfair competition. 



74 HISTORY OF THE TRADE-MARK "YALE" 

AS FINDINGS OF LAW 

The plaintiff has no trade-mark right in the outline of, or the figure of 
panel. 

The plaintiff is not entitled to any accounting for profits, or damages as de- 
manded in the complaint. 

The plaintiff is entitled to an injunction restraining the defendant from manu- 
facturing or selling night latches of the same general style and appearance as the 
plaintiff's night latches, having the cylinder heads therein marked with the word 
"EAGLE" contained in a sunken panel having either straight or slightly curved 
sides as heretofore used by defendant, or in any other sunken panel so similar to 
plaintiff's panel as to be likely to mislead purchasers. 

And I direct the entry of a decree enjoining the defendant as aforesaid. 
Dated February 14, 19 10. 

James W. Gerard, 

J. S. C. 

In accordance with this decision the following Injunc- 
tion Decree was entered at a Special Term, Part IV, of the 
New York Supreme Court, held in and for the County of 
New York, at the County Court House, in the Borough of 
Manhattan, City of New York, on the 14th day of Febru- 
ary, 1910. 

INJUNCTION DECREE 



The Yale & Towne Manufacturing Co., 
Plaintiff, 
against 
Eagle Lock Company, 

Defendant. 



Present: 

*■ Hon. James W. 
Gerard, 
Justice. 



This action having been commenced by the personal service of a summons and 
complaint on the defendant ; and the defendant having thereafter served its amended 
answer, and the action being at issue, and having come on for trial before Mr. 
Justice Gerard, at Special Term, Part IV, and having been tried on the 18th, 19th, 
20th, 2 1 st, 22d, 25th, 26th, 27th, 28th, and 29th days of October, 1909, and on the 
1st, 3d, 4th, and 5th days of November, 1909; and the plaintiff having appeared by 
Messrs. John G. Milburn and Louis H. Porter, its counsel; and the defendant having 
appeared by Messrs. Antonio Knauth and James L. Suydam, its counsel; and the 
parties having submitted their proofs; and the trial Justice having made and filed 
his decision in writing, stating separately his findings of fact and his conclusions of 
law; and it appearing from such decision that the night latches as heretofore manu- 



HISTORY OF THE TRADE-MARK "YALE" 75 

factured and sold by the defendants constitute unfair competition with the night 
latches as manufactured and sold by the plaintiff, and that the plaintiff is entitled 
to an injunction restraining the defendant from manufacturing or selling such 
night latches: 

NOW, Upon motion of Louis H. Porter, attorney for the plaintiff, 
IT IS HEREBY ORDERED, ADJUDGED AND DECREED, That the 
defendants, its agents, servants, and employees be and they hereby are perpetually 
and forever enjoined and prohibited from manufacturing or causing to be manu- 
factured, or selling or causing to be sold, or offering for sale in any manner what- 
soever, directly or indirectly, any cylinder rim night latches of the same general 
style and appearance as the plaintiff's night latches, having the cylinder heads 
thereof marked with the word "EAGLE " contained in a sunken panel having either 
straight or slightly curved sides as heretofore used by defendant, or in any other 
sunken panel so similar to plaintiff's panel as to be likely to mislead purchasers. 

ENTER 
J. W. G. 

J. S. C. 
William F. Schneider, 

Clerk. 



